The Complainant is Fenix International Limited c/o Walters Law Group, United States of America.
The Respondent is Tuncay Karatas, Skalonga Event, Turkey. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2021. On January 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 19, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that 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 the Respondent of the Complaint, and the proceedings commenced on January 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 10, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 11, 2021. The Center appointed Kaya Köklü as the sole panelist in this matter on February 23, 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 The Complainant owns and operates an online media platform, which enables its users to post and subscribe to online audiovisual content. Since at least 2016 the Complainant’s online platform is accessible through the Complainant’s website resolving from its domain name The Complainant owns various word and figurative ONLYFANS trademark registrations. According to the provided documents in the case, the Complainant is, inter alia, the registered owner of the European Union Trade Mark Registration No. 017912377 (filed on June 5, 2018 and registered on January 9, 2019) covering trademark protection for products and services covered in classes 9, 35, 38, 41, and 42 (Annex E to the Complaint). The Respondent appears to be an individual or company from Turkey. The disputed domain name was registered on December 5, 2020. Apparently, the disputed domain name has not been actively used since its registration. On December 17, 2020, the Respondent stated in a short email communication with a third party that it wants “to use this domain for a new project” and that it would be happy to work with the Complainant (Annex H to the Complaint). The same day, the Complainant sent a cease-and-desist letter to the Respondent and tried in vain to solve the dispute amicably by asking for a transfer of the disputed domain name (Annex I to the Complaint). 5. Parties’ Contentions A. Complainant The Complainant is of the opinion that the disputed domain name is confusingly similar to its ONLYFANS trademark. Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It is rather argued that the disputed domain name falsely suggests that there is some official or authorized link between the Complainant and the Respondent. Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant particularly argues that the Respondent must have been well aware of the Complainant’s ONLYFANS trademark, when registering the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark 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. Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complainant’s contentions. Stanworth Development Limited v. E Net Marketing Ltd.,WIPO Case No. D2007-1228. However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views captured therein. A. Identical or Confusingly Similar The Panel notes that the Complainant has satisfied the threshold requirement of having trademark rights in ONLYFANS. As evidenced in the Complaint, the Complainant is the owner of various ONLYFANS trademarks, which, according to the case file (Annex E to the Complaint) are registered in various jurisdictions. The Panel finds that the disputed domain name is confusingly similar to the Complainant’s registered ONLYFANS trademark, as it fully incorporates the Complainant’s trademark. As stated at section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity. The mere addition of the country name “turkiye” does, in view of the Panel, not serve to avoid a finding of confusing similarity between the disputed domain name and the Complainant’s ONLYFANS trademark. In the Panel’s view, the generic Top-Level Domain (“gTLD”) “.club” may, as a general principle, be disregarded when assessing identity or confusing similarity between a domain name and a trademark (in line with prior UDRP decisions concerning the use of a gTLD within a domain name, See V&S Vin & Sprit AB v. Ooar Supplies,WIPO Case No. D2004-0962; Google Inc. v. Nijat Hassanov,WIPO Case No. D2011-1054). Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Panel further finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name. While the burden of proof on this element remains with the complainant, previous UDRP panels have recognized that this would result in the often impossible task of proving a negative, in particular as the evidence in this regard is often primarily within the knowledge of the respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. See, Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455. The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or make any convincing argument to demonstrate rights or legitimate interests in the disputed domain name according to the Policy, paragraphs 4(a)(ii) and 4(c). In its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant’s trademark ONLYFANS in a confusingly similar way within the disputed domain name. There is also no indication in the current record that the Respondent is commonly known by the disputed domain name, not least because the disputed domain name has apparently yet not been actively used. In the absence of a response, the Respondent has also failed to demonstrate any of the other non-exclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or other evidence of rights or legitimate interests in the disputed domain name. In this regard, the Panel particularly is of the opinion that a not further explained “new project”, as alleged in the Respondent’s email communication of December 17, 2020 without any further details, is not sufficient to establish a right or legitimate interest in the disputed domain name. Furthermore, the nature of the disputed domain name, comprising the Complainant’s trademark and a geographical term, cannot constitute fair use in these circumstances as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See section 2.5.1. of the WIPO Overview 3.0. As a conclusion, the Panel finds that the Complainant has also satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel is convinced that the Respondent was aware of the Complainant’s trademark when it registered the disputed domain name in December 2020. At the date of registration of the disputed domain name, the Complainant’s ONLYFANS trademark was already registered and enjoyed increasing recognition and popularity worldwide. With respect to the use of the disputed domain name in bad faith, as already indicated before, the disputed domain name has apparently yet not been linked to an active website. Nonetheless, and in line with the previous UDRP decisions (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000‑0003) and section 3.3 of the WIPO Overview 3.0, the Panel believes that the non-use of a domain name does not prevent a finding of bad faith use. Applying the passive holding doctrine as summarized in section 3.3 of the WIPO Overview 3.0, the Panel assesses the Complainant’s trademark ONLYFANS as sufficiently distinctive, particularly considering its rising recognition and popularity (Annex F to the Complaint), so that a mere descriptive use of the Complainant’s trademark by the Respondent seems unlikely. Furthermore, the Panel accepts the failure of the Respondent to respond to the Complainant’s cease-and-desist letter of December 17, 2020 and to the Complainant’s contentions as an additional indication for bad faith use. Finally, the Panel is of the opinion that any active website linked to the dispute domain name would likely cause the false impression that it is operated or at least endorsed or authorized by the Complainant. Taking all circumstances of this case into consideration, the Panel concludes that in the present case the passive holding of the disputed domain name indicates bad faith use by the Respondent. Consequently, the Panel is convinced that the disputed domain name was registered and is being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, paragraph 4(a)(iii) 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 Kaya Köklü
Sole Panelist
Date: March 7, 2021
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