Complainant is Fenix International Limited, United States of America (“United States”), represented by Walters Law Group, United States.
Respondent is Registration Private, Domains By Proxy, LLC, United States / Name Redacted1. 2. The Domain Name and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 10, 2020. On June 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 12, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 18, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 18, 2020. The Center received two email communications from Respondent on June 18, 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 Respondent of the Complaint, and the proceedings commenced on June 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 12, 2020. On June 22, 23, and 24, 2020, the Center received email communications from Respondent. The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on July 21, 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 Complainant has continuously used the mark ONLYFANS (“Complainant’s Mark”) since at least July 4, 2016, in connection with the provision of streaming audio, visual, and audiovisual material and other entertainment services. Complainant offers these services through the website it owns and operates located at the The disputed domain names Complainant contends that the disputed domain names are confusingly similar to its ONLYFANS trademark because they reproduce identically and entirely the ONLYFANS mark. Complainant argues that the inclusion of the merely generic or descriptive abbreviation “tv”, at the second-level or the use of the “.tv” Top-Level Domain (“TLD”) are insufficient to distinguish the disputed domain names from Complainant’s ONLYFANS trademark. Complainant also alleges that Respondent is not commonly known by the disputed domain names, is not associated or affiliated with Complainant in any way, and was never licensed or authorized to use Complainant’s Mark. Furthermore, Complainant argues Respondent is not making a legitimate noncommercial or fair use of the disputed domain names since they falsely suggest an affiliation with Complainant and the passive holding of the disputed domain names cannot confer any rights or legitimate interests. Lastly, Complainant alleges that Respondent registered and used the disputed domain names in bad faith. According to Complainant, Respondent must have had actual knowledge of Complainant’s rights in the ONYFANS mark because Complainant was already using the mark three years before the disputed domain names were registered. Furthermore, Complainant argued that Respondent’s active steps to conceal his or her identity through the provision and continued use of false contact information is clear evidence of bad faith registration and use. B. Respondent Respondent did not substantively reply to Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names were registered and are being used in bad faith. Furthermore, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.3, states: “Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding? Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.” Thus, even though Respondent has failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar Ownership of a nationally registered trademark registration constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it has rights in the ONLYFANS trademark through its United States and European Union registrations. With Complainant’s rights in the ONLYFANS mark established, the remaining question under the first element of the Policy is whether the disputed domain names (typically disregarding the TLD in which each domain name is registered) are identical or confusingly similar to Complainant’s Mark. The practice of disregarding the TLD in determining identity or confusing similarity is applied irrespective of the particular TLD (including with regard to “new gTLDs”); the ordinary meaning ascribed to a particular TLD would not necessarily impact assessment of the first element. WIPO Overview 3.0, section 1.11.2. Where the applicable TLD and the second-level portion of the domain name in combination contain the relevant trademark, panels may consider the domain name in its entirety for purposes of assessing confusing similarity WIPO Overview. 3.0, section 1.11.3. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7. Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. WIPO Overview 3.0, section 1.7; see also, e.g., Stefani Germanotta and Ate My Heart Inc. v. Deborah Allen, WIPOCase No. D2015-2353 (transferring Here, Complainant’s ONLYFANS mark is fully incorporated in both disputed domain names. Furthermore, the inclusion of the letters/abbreviation “tv” in the disputed domain name Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP. Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name: (i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue. Here, Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain names. Respondent has not submitted any arguments or evidence to rebut Complainant’s contention that it has never authorized, licensed or permitted Respondent to use the ONLYFANS mark in any way. Respondent is also not using the disputed domain names in connection with any bona fide offering of goods or services, nor is Respondent making a legitimate noncommercial or fair use of the disputed domain names because they do not resolve to any active websites. Facebook, Inc. v. Mirza Azim, WIPO Case No. D2016-0950, citing KOC Holding A.S. v. VistaPrint Technologies Ltd, Domain Administrator, VistaPrint,WIPO Case No. D2015-1910; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack,WIPO Case No. D2015-0070; Deutsche Lufthansa AG v. Mustermann Max, Muster AG,WIPO Case No. D2015-1320. Furthermore, there is no evidence on record suggesting that Respondent is commonly known by either disputed domain name; to the contrary Respondent appears to have used third party names to conceal its identity. Therefore, the Panel concludes that Respondent does not have rights or a legitimate interests in the disputed domain names within the meaning of Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. Id. Where it appears that a respondent employs a privacy or proxy service merely to avoid being notified of a UDRP proceeding filed against it, panels tend to find that this supports an inference of bad faith; a respondent filing a response may refute such inference. WIPO Overview 3.0, section 3.6. Panels additionally view the provision of false contact information (or an additional privacy or proxy service) underlying a privacy or proxy service as an indication of bad faith. Id. In this case, bad faith can be found in the registration and use of the disputed domain names. Complainant provided ample evidence to show the widespread use and numerous registrations of the ONLYFANS mark that long predate Respondent’s registration of the disputed domain names. Therefore, Respondent was likely aware of the ONLYFANS trademark when it registered the disputed domain names, or knew or should have known that they were identical or confusingly similar to Complainant’s Mark. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973. Furthermore, the passive holding doctrine applies in this case given the distinctiveness of Complainant’s Mark, Respondent’s failure to come forward with any evidence of a conceivable good faith use for the disputed domain names, Respondent’s provision of false contact information to conceal his or her identity, and the implausibility of any conceivable good faith basis the disputed domain names could be put to by Respondent. It is clear that whomever registered the disputed domain names provided false contact information in order to avoid being the subject of any UDRP proceeding. The Panel finds it likely that Respondent selected the disputed domain names with the intention of taking advantage of Complainant's reputation by registering domain names fully containing Complainant’s Mark with the intent of ultimately using them for illegitimate purposes, such attracting Internet users for Respondent’s commercial gain. See e.g., Koc Holding A.S. VistaPrint Technologies Ltd.,WIPO Case No. D2015-0886; Madonna Ciccone, p/k/a Madonna v. Dan Parisi / “Madonna.com”,WIPO Case No. D2000-0847). For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain names were in bad faith, pursuant to paragraph 4(b) of the Policy. 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 names Brian J. Winterfeldt 1 Respondent appears to have used the name and contact details of a third party when registering the disputed domain names. In light of the potential identity theft, the Panel has redacted Respondent’s name from this Decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain names, which includes the name of Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case. See ASOS plc. v. Name Redacted,WIPO Case No. D2017-1520.
Sole Panelist
Date: August 4, 2020
Full & Egal Universal Law Academy