The Complainant is Fenix International Limited c/o Walters Law Group, United States of America (“United States”).
The Respondent is WhoisGuard Inc., Panama / Nemanja Krecelj, Bosnia and Herzegovina. 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 8, 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 12, 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 12, 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 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 10, 2021. On February19, 2021, the Respondent forwarded an email communication to the Center indicating its consent to the transfer of the disputed domain name to the Complainant and requesting information about how to implement this transfer being the disputed domain name locked. The Center informed the Parties about the possibility of suspending the administrative proceeding to implement a settlement agreement, and the Complainant requested the suspension of the administrative proceeding to implement a settlement agreement with the Respondent. On February 22, 2021, the Center notified the suspension of the administrative proceeding until March 24, 2021. On March 24, 2021, further to the Complainant’s request for reinstitution, the administrative proceeding was reinstituted, and the Center proceeded to the panel appointment. The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on April 12, 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 is a United Kingdom company, which owns and operates a social media platform that allows users to post and subscribe to audiovisual exclusive, mostly adult, content. The users of this platform pay a subscription fee to see exclusive content and live streaming from their favorite content creators. The Complainant’s social media platform is located at the website “www.onlyfans.com”, which is listed in 2021, according to Alexa Internet, as the 428th most popular website worldwide, and the 187th most popular website in the United Sates. The Complainant holds trademark registrations that comprise the term “onlyfans” in various jurisdictions around the world, including the following: - European Union Trademark Registration No. 17,912,377 ONLYFANS, word, registered on January 9, 2019, in classes 9, 35, 38, 41 and 42; - European Union Trademark Registration No. 17,946,559 ONLYFANS, figurative, registered on January 9, 2019, in classes 9, 35, 38, 41, and 42; - United States Trademark Registration No. 5,769,267 ONLYFANS, word, registered on June 4, 2019, in class 35; - United States Trademark Registration No. 5,769,268 ONLYFANS.COM, word, registered on June 4, 2019, in class 35; - United States Trademark Registration No. 6,253,455 ONLYFANS, word, registered on January 26, 2021, in classes 9, 35, 38, 41, and 42; - United States Trademark Registration No. 6,253,475 ONLYFANS, figurative, registered on January 26, 2021, in classes 9, 35, 38, 41, and 42; - United Kingdom Trademark Registration No. 917,912,377 ONLYFANS, word, registered on January 9, 2019, in classes 9, 35, 38, 41 and 42; and - United Kingdom Trademark Registration No. 917,946,559 ONLYFANS, figurative, registered on January 9, 2019, in classes 9, 35, 38, 41, and 42, (collectively the “ONLYFANS mark”). Prior decisions under the Policy have recognized the Complainant’s common law trademark rights in the ONLYFANS mark since 2017 and its first use in commerce since 2016, as well as the global fame and success of the Complainant’s social media platform and the consequent well-known character of the ONLYFANS mark1 . The Complainant further owns the domain name The disputed domain name was registered on December 21, 2020, and it is currently inactive resolving to a browser error page. According to the Complainant’s evidence, the disputed domain name was linked to a website, in English language, offering free access to premium content of various creators from the Complainant’s platform. This website included various references to the ONLYFANS mark and numerous posts from various creators, with photographs and videos of adult content, that were alledgedly downloaded from the Complainant’s platform, indicating “[…] We give biggest database of OnlyFans content on the Internet. More than 1 million and videos 200.000+ OnlyFans creators available for free. Just type username or name of your favorite OnlyFans creator and get access to their content free of charge […]”. This website did not include any reference to the identity and contact details of the owner of the site or the disputed domain name, and/or its lack of relationship with the Complainant. 5. Parties’ Contentions A. Complainant Key contentions of the Complaint may be summarized as follows: The disputed domain name reproduces the ONLYFANS mark adding the word “leaks” between the terms “only” and “fans”, which does not avoid the Complainant’s trademark being recognizable within the disputed domain name, being the disputed domain name confusingly similar to this trademark. The Respondent has no rights or legitimate interests in the disputed domain name. No evidence indicates that the Respondent is known by the terms included in the disputed domain name, and the Respondent has no authorization to use the Complainant’s trademark or to download and post any content from the Complainant’s social media platform. The use of the disputed domain name in connection to an illegal activity, particularly in connection to a website that displays copyright-protected content allegedly misappropriated from the Complainant’s social media platform, can never confer rights or legitimate interests. The Respondent’s website uses the ONLYFANS mark and offers pirated content from the Complainant’s platform in direct competition with the Complainant’s services. The disputed domain name was registered and is being used in bad faith. Due to the popularity of the Complainant’s platform, the Respondent was likely aware of the ONLYFANS mark when it registered the disputed domain name. The fact that the Respondent’s website offers pirated content from the Complainant’s website corroborates the Respondent knew or should have known of the ONLYFANS mark at the time of registration of the disputed domain name. Other evidences of the Respondent’s bad faith are the use of a privacy service for the registration of the disputed domain name, and the lack of response to the cease and desist letter sent by the Complainant on January 11, 2021. The Respondent intentionally registered and used the disputed domain name in an attempt to divert Internet traffic from the Complainant’s website to a site providing access to misappropriated copyright-protected content from the Complainant’s platform, which disrupts the Complainant’s business, depriving the Complainant and its users of revenue, and evidences the Respondent’s bad faith. The Complainant has cited previous decisions under the Policy and various sections of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) that it considers supportive of its position. The Complainant requests the transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. However, the Respondent forwarded an email communication to the Center (on February19, 2021) indicating that the Respondent had “checked [the Complainant’s] attachments” and, “based on [the Complainant’s] request from ‘Annex H - Demand Letter’”, the Respondent’s social media accounts had already been deleted (although its Facebook page was going to require 14 days for deletion), and the disputed domain name was going to be redirected to the Complainant’s domain name The Respondent further indicated its intention to the transfer of the disputed domain name to the Complainant, requesting information about how to implement this transfer being the disputed domain name locked. This email communication was sent from the Respondent’s email address, and it was signed by the Respondent. 6. Discussion and Findings The Panel has authority to decide the dispute, the Complainant has made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel considers the Respondent’s communication dated February 19, 2021, an acknowledgement of the Complainant’s contentions in Annex H of the Complaint, as well as a unilateral consent for the transfer of the disputed domain name to the Complainant. Furthermore, all cumulative facts and circumstances of this case corroborate the Respondent’s willingness to comply with the Complainant’s request. Particularly, following the instructions provided in the Complainant’s cease and desist letter, the fact that the Respondent has apparently taken down the website that was linked to the disputed domain name, without any attempt to rebut the Complainant’s contentions, and the fact that the Respondent requested information about how to implement this transfer. Therefore, the Panel considers that there is no need to enter into an analysis of the existence of the three elements required by paragraph 4(a) Policy, and orders the transfer of the disputed domain to the Complainant on the basis of the Respondent’s consent. See section 4.10, WIPO Overview 3.0. 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 Reyes Campello Estebaranz 1 See Fenix International Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Samuel Walton,WIPO Case No. D2020-3131; Fenix International Limited c/o Walters Law Group v. WhoisGuard, Inc. / Arsen Kadyrov,WIPO Case No. D2021-0352; Fenix International Limited v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Juan Paolo Dino,WIPO Case No. D2020-3460; Fenix International Limited c/o Walters Law Group v. WhoisGuard, Inc., WhoisGuard Protected / Marry Mae Cerna,WIPO Case No. D2021-0327; and Fenix International Limited v. WhoisGuard Protected, WhoisGuard Inc. / henry chandler,WIPO Case No. D2021-0340.
Sole Panelist
Date: April 20, 2021
Full & Egal Universal Law Academy