The Complainant is Fenix International Limited, c/o Walters Law Group, United States of America (“United States”).
The Respondent is Andre Fabrici, Gibraltar. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2021. On February 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 9, 2021, 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 February 11, 2021 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 amendment to the Complaint on February 11, 2021. 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 the Respondent of the Complaint, and the proceedings commenced on February 17, 2021. On February 17, 2021, the Respondent sent an informal email. In accordance with the Rules, paragraph 5, the due date for Response was March 9, 2021. The Respondent did not submit any formal response. Accordingly, the Center informed the Parties that it would proceed to panel appointment on March 10, 2021. The Center appointed Andrew F. Christie as the sole panelist in this matter on March 22, 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 operates the website located at “www.onlyfans.com”, which allows users to post and subscribe to audiovisual content. According to Alexa Internet, the Complainant’s website is the 428th most popular website on the World Wide Web. The Complainant is the owner of several trademark registrations for the word trademark ONLYFANS, including European Union Trademark Registration No. EU017912377 (filed on June 5, 2018; entered in the register on January 9, 2019) and United States Trademark Registration No. 5769267 (filed on October 29, 2018; registered on June 4, 2019). The Complainant is also the owner of European Union Trademark Registration No. EU017946559 (filed on August 22, 2018; entered in the register on January 9, 2019) for a stylized ONLYFANS trademark. The disputed domain name was registered on December 21, 2020. The Complainant has provided a screenshot, dated January 8, 2021, showing that the disputed domain name resolved to a website containing the Complainant’s stylized ONLYFANS trademark at the top of the page, followed by instructions on how to “Generate Premium account and password for OnlyFans”. As of the date of this decision, it appears that the disputed domain name does not resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which it has rights because: (i) the disputed domain name consists of the Complainant’s ONLYFANS word trademark with the addition of the generic word “free”, which does nothing to confer legitimate rights or interests in the disputed domain name on the Respondent; and (ii) it is well established that Top-Level Domain (“TLD”) extensions do not sufficiently distinguish a domain name from a corresponding trademark, as it is a standard registration requirement. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) the home page of the website resolving from the disputed domain name uses the Complainant’s word trademark and stylized trademark, and falsely claims to offer free premium accounts and passwords for access to the Complainant’s services; (ii) based on information and belief, it does not appear that any user is actually able to gain access to “free premium accounts”, but rather that the offering is a scam to deceive users into providing their personal information in an apparent phishing attempt; and (iii) there is no evidence that the Respondent, who is hiding its identity from the public behind a WhoIs privacy wall, is known by the text of the disputed domain name. The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) the Complainant had been using its ONLYFANS word trademark and stylized trademark for about four years before the Respondent registered the disputed domain name; (ii) the Respondent hid his identity from the public behind a WhoIs privacy wall which, combined with a failure to submit a response, is evidence of bad faith registration; (iii) the Respondent used the disputed domain name to purport to offer services that were identical to the Complainant’s own services, including counterfeit access to the Complainant’s services and inviting users to fraudulently access paywall-protected content; (iv) the Respondent clearly registered the disputed domain name to divert Internet traffic from the Complainant’s website to the Complainant’s direct competitors by providing the Complainant’s users with an unauthorized access point that requires them to provide information, in an apparent phishing attempt; (v) the home page of the website resolving from the disputed domain name uses the Complainant’s word trademark and stylized trademark to collect users’ personal information under the pretense of offering those users the ability to obtain free ONLYFANS “premium accounts”; and (vi) the Complainant sent a contact request to the Respondent through the GoDaddy WhoIs “Contact Domain Holder” form on January 11, 2021, demanding that the Respondent stop using the disputed domain name and transfer the disputed domain name to the Complainant, to which the Respondent did not respond. B. Respondent The Respondent did not formally reply to the Complainant’s contentions. However, on February 17, 2021, the Center received an email, purportedly from Andrey Lagutin, stating: “It is not My domain! I don’t have access to this domain!”. 6. Discussion and Findings A. Identical or Confusingly Similar Once the generic Top-Level Domain (“gTLD”) “.online” is ignored (which is appropriate in this case), the disputed domain name consists of the whole of the Complainant’s registered word trademark ONLYFANS followed by the word “free”. The Complainant’s word trademark ONLYFANS is clearly recognizable within the disputed domain name. The addition of the word “free” does not prevent a finding of confusing similarity of the disputed domain name with the Complainant’s word trademark. As provided in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its ONLYFANS word trademark or stylized trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The evidence provided by the Complainant shows that the disputed domain name was used to resolve to a website at which was displayed, without authorization, the Complainant’s ONLYFANS stylized trademark and purported instructions on how to generate a premium account and a password for the Complainant’s offerings. According to the present record, therefore, the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. The Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent has not rebutted. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith The disputed domain name was registered more than four years after the Complainant began using, and approximately two years after the Complainant first registered, its ONLYFANS trademarks. It is inconceivable that the Respondent registered the disputed domain name ignorant of the existence of the Complainant’s ONLYFANS trademarks, given that the disputed domain name consists of the Complainant’s word trademark with merely the addition of the word “free” at the end, and that the homepage of the Respondent’s website prominently displayed the Complainant’s stylized trademark. Given the Respondent’s lack of rights or legitimate interests in the disputed domain name, and the confusing similarity of the disputed domain name to the Complainant’s word trademark, any use of the disputed domain name by the Respondent almost certainly implies an affiliation with the Complainant that does not exist, and so would be a use in bad faith. Furthermore, the evidence on the record provided by the Complainant indicates that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion in the minds of the public as to an association between the website and the Complainant. Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith. 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 Andrew F. Christie
Sole Panelist
Date: April 5, 2021
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