The Complainant is Fenix International Limited, United States of America (“United States”), represented by Walters Law Group, United States.
The Respondent is Perfect Privacy, LLC / Chad Moston, Speedplexer, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 9, 2020. On May 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 13, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 14, 2020 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 14, 2020 The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 14, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 24, 2020. The Center appointed Lynda M. Braun as the sole panelist in this matter on July 13, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant is a business that operates an online tool for YouTubers, fitness trainers, models, content creators, public figures and influencers, whereby users pay a small fee to see exclusive content and live streaming from their followers. The Complainant owns the domain name The Complainant owns several trademark registrations in the United States Patent and Trademark Office (“USPTO”), for example: ONLYFANS, United States Registration No. 5769267, registered on June 4, 2019, in international class 35; and ONLYFANS.COM, United States Registration No. 5769268, registered on June 4, 2019 in international class 35. The Complainant also has common law trademark rights in these trademarks since the Complainant has been using the trademarks in commerce in connection with streaming audio and video services since July 2016 (collectively, the “ONLYFANS Mark”). The Disputed Domain Name was registered on August 8, 2019, after the Complainant registered and used its ONLYFANS Mark. The Disputed Domain Name resolved to various pages containing third party pay‑per‑click sponsored links. One of the landing pages displayed the Complainant’s ONLYFANS Mark at the top of the page. Copies of these pages were submitted by the Complainant as annexes to the Complaint.1 The Complainant sent a cease and desist letter to Respondent on April 30, 2020 by email, requesting that the Respondent cease using and transfer the Disputed Domain Name to Complainant. The Respondent did not respond. 5. Parties’ Contentions A. Complainant The following are the Complainant’s contentions: - the Disputed Domain Name is confusingly similar to the Complainant’s trademark; - the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and, - the Disputed Domain Name was registered and is being used in bad faith. The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)(i-iii)): (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark. The Panel concludes that the Disputed Domain Name is confusingly similar to the ONLYFANS Mark as set forth below. It is uncontroverted that the Complainant has established rights in the ONLYFANS Mark based on its common law rights plus its several registered trademarks for the ONLYFANS Mark. The general rule is that “registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive”. CWI, Inc. v. Domain Administrator c/o Dynadot,WIPO Case No. D2015-1734. The Respondent has not rebutted this presumption, and therefore the Panel finds that the Complainant has rights in the ONLYFANS Mark. The Disputed Domain Name consists of a misspelling of the ONLYFANS Mark followed by the generic Top-Level Domain (“gTLD”) “.com”. Here, the replacement of the letter “l” with the letter “i” in the Disputed Domain Name does not prevent a finding of confusing similarity between the ONLYFANS Mark and the Disputed Domain Name. Specifically, the letter “i” in the Disputed Domain Name may be visually perceived as the letter “l” in the Complainant’s ONLYFANS Mark. Thus, it appears that the Respondent in this case intentionally chose the confusingly similar letter “i” to deceive Internet users. See A Medium Corporation v. Marat Mukhamet, WIPO Case No. D2018-1860 (the disputed domain name replaced the second “m” in medium with the letters “r” and “n”). Such a modification to a trademark is commonly referred to as “typosquatting” and seeks to wrongfully take advantage of errors by a user in typing a domain name into a web browser. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9; see also Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator,WIPO Case No. D2008-1302; Singapore Press Holdings Limited v. Leong Meng Yew,WIPO Case No. D2009-1080. Furthermore, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182. Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1. In this case, the Panel finds that the Complainant has made out a prima facie case. The Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case. Further, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its ONLYFANS Mark. The name of the Respondent has no apparent connection to the Disputed Domain Name that would suggest that it is related to a trademark or trade name in which the Respondent has rights. Nor does the Complainant have any type of business relationship with the Respondent. Based on the use made of the Disputed Domain Name that first resolved to a landing page with pay-per-click links, and later to a landing page that includes a security check, the Panel finds that the Respondent is not making a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Disputed Domain Name. Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy as set forth below. First, the Respondent’s registration of the Disputed Domain Name that contains a misspelling of the ONLYFANS Mark in an effort to take advantage of a typographical error is evidence of bad faith registration and use. See Nutricia International BV v. Eric Starling,WIPO Case No. D2015-0773. The Panel concludes that the Respondent knew about the Complainant’s rights in the ONLYFANS Mark when it registered the Disputed Domain Name, since it replaced the letter “l” with the letter “i” in the word “only” to misdirect users from the Complainant’s website to the Respondent’s website by capitalizing on typing mistakes made by users. See ESPN, Inc. v. XC2,WIPO Case No. D2005-0444 (“It is well-settled that the practice of typosquatting, of itself, is evidence of the bad faith registration of a domain name.”) Furthermore, the evidenced use of the Disputed Domain Name to resolve to a landing page with pay‑per‑click links supports a finding of bad faith in the circumstances of this case. Second, inactive or passive holding of the Disputed Domain Name by the Respondent may amount to bad faith use. See Advance Magazine Publishers Inc. and Les Publications Condé Nast S.A. v. ChinaVogue.com,WIPO Case No. D2005-0615; Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry – Succession Saint Exupéry – D’Agay v. Perlegos Properties,WIPO Case No. D2005-1085. It has long been held in UDRP decisions that the passive holding of a domain name that incorporates a well-known trademark without a legitimate purpose may indicate that the disputed domain name is being used in bad faith under paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574. Here, the Disputed Domain Name currently resolves to an inactive landing page with a security check, thus demonstrating bad faith. Finally, the Respondent’s lack of response to the cease-and-desist letter sent by the Complainant supports a finding of bad faith. Past UDRP panels have held that failure to respond to a cease-and-desist letter maybe considered a factor in finding bad faith registration and use of a domain name. See Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party,WIPO Case No. D2000-0330 Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name Lynda M. Braun 1 As of the writing of this decision, however, the Disputed Domain Name resolves to a landing page that states:
Sole Panelist
Date: July 21, 2020
“Before you continue to oniyfans.com By clicking the [ACCEPT] button you'll be redirected to the Chrome Store and be given the option to install "Safe Search" Extension, otherwise skip directly to your destination by clicking the close button to your right. This Extension will offer you a safer web search experience by changing your default search provider.”
This type of “security check” is often used by cybersquatters to install additional software in the user’s web browser. The practice of accessing and modifying a web browser’s settings without the user’s permission or ability to bypass the installation is commonly referred to as “browser hijacking”. Such browser modifications are at times intended to place unwanted advertising in the browser, often containing spyware for purposes of obtaining banking, personal, or other sensitive data.
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