Complainant is Fenix International Limited, United States of America (“United States”), represented by Walters Law Group, United States.
Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Howard Jones, 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 December 16, 2020. On December 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 17, 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 Complainant on December 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 amendment to the Complaint on December 18, 2020. The Center verified that the Complaint, together with the amendment to the 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 December 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 11, 2021. The Center appointed Georges Nahitchevansky as the sole panelist in this matter on January 20, 2021. 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, Fenix International Limited, owns and operates a social media platform that allows users to post and subscribe to audio visual content on the Internet. Complainant has used the name and mark ONLYFANS to identify its platform, which is accessible through Complainant’s website at “www.onlyfans.com”. Complainant owns trademark registrations for the ONLYFANS mark in connection with its services in the European Union (Registration Nos. 017912377and 017945559), United Kingdom (Registration Nos. 917946559 and 917912377), and the United States (Registration Nos. 5,769,267 and 5,769,268), the earliest of which issued to registration in January 2019.1 Respondent is an individual based in the United States. Respondent registered the disputed domain name on November 17, 2019. At some point thereafter, Respondent used the disputed domain name with a website that featured a logo that was similar in style and coloration to Complainant’s ONLYFANS logo and which purported to be “Reviewing Famous and Not so Famous Only Fans Pages Live.” The website included an explanation that “we created this site to expose the onlyfans time wasters & to shine a light on the better onlyfans pages.” The website also included a posting for a casting call in New Jersey. In addition, Respondent registered some social media handles on YouTube and Instagram that had the user names “OnlyFans Sucks” and “onlyfanz_suckz.” Complainant sent Respondent a demand letter on November 20, 2020, regarding Respondent’s registration and use of the disputed domain name and use of the ONLYFANS mark. Respondent apparently did not respond to Complainant’s letter, but took down the website at the disputed domain name and replaced it with different website. The new website featured a logo for “Cake.Pizza,” a statement “Coming Soon!! Only Fans Sucks!!!!!,” and some promotions for Cake Pizza and upcoming live stream content with names such as “The Street Harassment Experiment” and “Big Brother Turn Up.” The disputed domain name currently continues to resolve to that website. 5. Parties’ Contentions A. Complainant Complainant asserts that it has rights in the ONLYFANS mark through its trademark registrations for the ONLYFANS mark and through its extensive use of ONLYFANS since June 2016 for a popular social media platform. Complainant contends that the disputed domain name is identical to Complainant’s ONLYFANS page as it fully and solely consists of the exact ONLYFANS mark with the non-distinguishing generic Top-Level Domain” (“gTLD”) extension “.info”. Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name as Respondent (i) registered the disputed domain name in bad faith, (ii) is not known by the name and mark ONLYFANS, (iii) and has no rights in the ONLYFANS mark which is associated with Complainant and its services. Lastly, Complainant maintains that Respondent has registered and used the disputed domain name in bad faith as Respondent registered the disputed domain name well after Complainant had developed rights in the ONLYFANS mark and did so in full knowledge of Complainant’s rights in the ONLYFANS mark. Complainant also argues that Respondent has acted in bad faith by (i) using the disputed domain name to promote casting calls and other services on Respondent’s website at the disputed domain name – a website that copied many elements of Complainant’s website at “www.onlyfans.com”, and (ii) failing to respond to Complainant’s November 2020 demand letter and thereafter changing the website at the disputed domain name. B. Respondent Respondent did not 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 name is 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 name; and, (iii) the disputed domain name was registered and is being used in bad faith. Here, although Respondent has failed to respond to the complaint, the default does not automatically result in a decision in favor of Complainant, nor is it an admission that Complainant’s claims are true. The burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. A Panel, however, may draw appropriate inferences from a respondent’s default in light of the particular facts and circumstances of the case, such as regarding factual allegations that are not inherently implausible as being true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); see also, The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0 at section 1.2.1. Complainant has provided evidence that it owns and obtained trademark registrations for the ONLYFANS mark in the European Union, the United Kingdom, and the United States prior to the date that Respondent registered the disputed domain name. Complainant has also provided evidence regarding its use of the ONLYFANS mark since 2016. With Complainant’s rights in the ONLYFANS mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain such as “.info”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold. In the instant proceeding, the disputed domain name is identical to Complainant’s ONLYFANS mark as the disputed domain name fully and solely incorporates the ONLYFANS mark. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s ONLYFANS mark and in showing that the disputed domain name is identical to that trademark. B. Rights or Legitimate Interests 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. 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. Based on the evidence submitted in this proceeding, it is questionable whether Respondent has rights or legitimate interests in the disputed domain name. Respondent appears to have first used the disputed domain name for a website that attempted to pass itself off as a website of Complainant and which featured a logo that was similar to Complainant’s ONLYFANS logo. While it is possible that Respondent’s intent was to create a website that is critical of Complainant, particularly as Respondent registered social media user names such as “OnlyFans Sucks” and “onlyfanz_suckz” and in a second website at the disputed domain name included the legend “Coming Soon!! Only Fans Sucks!!!!!”, the evidence does not really support that possibility. To the Panel, the evidence concerning Respondent’s use of the disputed domain name, none of which is contested by Respondent who has failed to file a response, shows use of the disputed domain name with websites that appear to promote goods and services of other parties. The websites associated with the disputed domain name do not look to include any bona fide criticism of Complainant or its services. The first website promoted casting calls in New Jersey and was set up to look like a website of Complainant to perhaps promote for a fee certain pages from Complainant’s website at “www.onlinefans.com”. The second website was posted by Respondent after receiving a demand letter from Complainant and promoted live stream content from an entity calling itself “Cake Pizza”. Both websites appear to be commercial in nature and certainly are not websites whose purpose was noncommercial criticism of Complainant. Respondent’s lack of legitimate interests is further underscored by the fact that the disputed domain name is essentially identical to Complainant’s ONLINEFANS mark, thereby implicitly suggesting a possible connection between Respondent and Complainant. The lack of any bona fide criticism appearing on the websites posted at the disputed domain name coupled with the commercial nature of these websites undermines the possibility that Respondent’s use of the disputed domain name that is identical to Complainant’s ONLINEFANS mark is legitimate. Simply put, using a domain name that is identical to that of an established mark of a complainant cannot be legitimate where, as here, the use of the disputed domain name has been to impersonate or suggest a connection with the Complainant for the purpose of promoting products or services of Respondent or other parties. WIPO Overview 3.0 at sections 2.5.1 and 2.6.2. Given that Complainant has established with sufficient evidence that it owns rights in the ONLYFANS mark, and given Respondent’s above noted actions and failure to file a response, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case. C. Registered and Used in Bad Faith In view of Respondent’s actions, and failure to appear in this proceeding, it is easy to infer that Respondent’s registration and use of the disputed domain name, which solely consists of Complainant’s ONLYFANS mark, has been done opportunistically and in bad faith for purposes of attracting web users to Respondent’s website to offer the content or services of third parties, or to promote Respondent and his services. Respondent registered the disputed domain name well after Complainant had established rights in the ONLYFANS mark in connection with its social media platform, and after Complainant had obtained trademark registrations for the ONLYFANS mark. Given that Respondent used the entire ONLYFANS mark in the disputed domain name in connection with a website that was designed to look like Complainant’s website, that featured a logo that is similar to Complainant’s ONLYFANS logo, and which essentially referred to Complainant’s ONLYFANS platform, it appears more probable than not that Respondent was fully aware of Complainant and its ONLYFANS mark when Respondent registered the disputed domain name. Although Respondent has taken some steps to make it appear that the registration and use of the disputed domain name is for a criticism website, the evidence submitted by Complainant, none of which is contradicted by Respondent, shows otherwise. The use of a critical term such as “Only Fans Sucks” on the second website that is associated with the disputed domain name appears to be pretextual, given that most of the website promotes live stream content from “Cake Pizza”. Simply put, Respondent does not look to be using the disputed domain name for a criticism website, but is more likely using the disputed domain name to promote his own venture or those of other parties. Additionally, the fact that Respondent failed to respond to a demand letter sent by Complainant’s representative regarding the registration and use of the disputed domain name, and thereafter changed the website to promote third party live stream content, further underscores Respondent’s bad faith in this matter. The Panel thus finds that Complainant succeeds under this element 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 name Georges Nahitchevansky 1 At the time, the Complaint was filed, Complainant owned two European Union trademark registrations for its ONLYFANS mark and logo. As a result of the United Kingdom formally exiting the European Union at the end of 2020, Complainant’s European Union registrations automatically generated two United Kingdom equivalent national trademark registrations that are cited herein.
Sole Panelist
Date: February 5, 2021
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