The Complainant is Fenix International Limited c/o Walters Law Group, United States of America (“United States”).
The Respondent is Host Master, 1337 Services LLC, Saint Kitts and Nevis. 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 24, 2021. On February 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 26, 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 March 2, 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 March 5, 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 March 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 6, 2021. The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on April 9, 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 content. This platform is primarily an online tool for YouTubers, fitness trainers, models, content creators, celebrities, and influencers, which allow them to monetize their influence, whereby their followers pay a small 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; 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 mark, at least among its relevant users1. The Complainant further owns the domain name The disputed domain name was registered on December 11, 2020, and it is linked to a website, in English language, allegedly offering downloading services for the content included in the Complainant’s social media platform, to download this content and post it on that website. This website includes a browser tap icon identical to the one used in the Complainant’s website, consisting of a lock within a circle and a square in light blue color, which is also part of the Complainant’s figurative trademarks. This website uses identical combination of colors as the one used in the Complainant’s platform (white and light blue), and includes various references to the ONLYFANS mark, not including 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. The Respondent’s website includes numerous posts from various creators, with photographs and videos, mainly of adult content, that were allegedly downloaded from the Complainant’s platform. 5. Parties’ Contentions A. Complainant Key contentions of the Complaint may be summarized as follows: The disputed domain name contains sufficiently recognizable aspects of the ONLYFANS mark, only deleting the letters “nly” from its middle, being 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 of the content included in the Complainant’s social media platform. The website linked to the disputed domain name is a tube site that hosts adult entertainment content in direct competition with the Complainant’s services, including pirated content obtained from the Complainant’s platform. 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 to operate a website providing services in direct competition with the Complainant. Previous decisions under the Policy have found that offering pirated content does not constitute a bona fide offering of goods and services, and including such 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 over the contact link included in the WhoIs information of the disputed domain name on January 25, 2021. The Respondent intentionally registered and is using the disputed domain name in an attempt to divert Internet traffic from the Complainant’s website to a site offering content pirated from the Complainant’s users, which strongly suggests the Respondent’s bad faith, being aware of the Complainant and its trademark, intentionally seeking to profit from the confusion with this mark. The Complainant has cited previous decisions under the Policy that it considers supportive of its position, and requests the transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 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 has authority to decide the dispute examining the three elements in paragraph 4(a) of the Policy, taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules. A. Identical or Confusingly Similar The Complainant indisputably has rights in the registered trademark ONLYFANS, both by virtue of its trademark registrations and as a result of its goodwill and reputation. The disputed domain name incorporates the ONLYFANS mark, omitting its central letters “nly” and adding the generic Top-Level Domain (“gTLD”) “.party”, which is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity. Therefore, the Panel considers that the disputed domain name includes relevant features of the ONLYFANS mark, being an abbreviation of this mark, and being this mark recognizable in the disputed domain name. The content of the website associated to the disputed domain name further confirms the confusing similarity, as this website contains various references to the ONLYFANS mark, allegedly providing services related to the Complainant’s social media platform and posting content obtained from this platform, using identical browser tap icon and the same combination of colors used in the Complainant’s website. See sections 1.7, and 1.15, of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Accordingly, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, and the first element of the Policy under paragraph 4(a) has been satisfied. B. Rights or Legitimate Interests Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the Respondent’s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the Respondent the burden of production to come forward with relevant evidence of rights or legitimate interests in the disputed domain name, once the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests. The Complainant’s assertions and evidence effectively shift the burden of production to the Respondent of producing evidence of rights or legitimate interests in the disputed domain name, providing the circumstances of paragraph 4(c) of the Policy, without limitation, that may establish rights or legitimate interests in the disputed domain name in order to rebut the Complainant’s prima facie case. However, the Respondent has not replied to the Complainant’s contentions. In the absence of any Response, the Panel notes that the disputed domain name is used in connection to a website allegedly offering downloading services for the content included in the Complainant’s social media platform, to download this content and post it on the Respondent’s website with no authorization. The Respondent’s website is in competition with the Complainant’s services and pirates its platform content, which cannot be considered a bona fide offering of goods or services. There is no indication or evidence showing that the Respondent is commonly known by the disputed domain name, no indication of any bona fide offering of goods or services under the disputed domain name, and no indication of any legitimate noncommercial or fair use of the disputed domain name. A core factor in assessing potential fair use of the disputed domain name is that it does not falsely suggest affiliation with the Complainant’s trademark. The disputed domain name incorporates the most relevant features of the Complainant’s trademark and its platform’s adult entertainment content. The Respondent’s website further reproduces the Complainant’s website browser tap icon, as well as the Complainant’s website combination of colors or a “look and feel” close to the Complainant’s one, and includes various references to the ONLYFANS mark and pirated content obtained from the Complainant’s platform. Therefore, the Panel considers that there is a clear risk of implied affiliation. It is further remarkable the Respondent has not replied to the Complaint or to the Complainant’s cease and desist letter, not providing any explanation connected to any of the circumstances included in paragraph 4(c) of the Policy or any other circumstance that may be considered as rights or legitimate interests in the disputed domain name. All the above-mentioned circumstances lead the Panel to conclude that the Respondent lacks of any rights or legitimate interests in the disputed domain name, and the second element of the Policy under paragraph 4(a) has been established. C. Registered and Used in Bad Faith The Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith. The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2, WIPO Overview 3.0. The Panel considers that all cumulative circumstances of this case point to bad faith registration and use of the disputed domain name. In view of the popularity of the Complainant’s platform, the Respondent’s lack of explanation of any rights or legitimate interests in the disputed domain name, not coming forward to deny the Complainant’s assertions of bad faith, and the content of the website at the disputed domain name, either intended for generating confusion with the Complainant’s website or to take advantage of the Complainant’s platform, it is easy to conclude the Respondent’s bad faith. Additionally, the fact that Respondent seems to be using some short of a privacy or proxy service for the registration of the disputed domain name, noting the use of the disputed domain name, corroborates the Respondent’s bad faith. Therefore, on the balance of probabilities, taking into consideration all cumulative circumstances of this case, the Panel considers that the disputed domain name was likely registered and is being used to target the Complainant and its trademark with the intention of obtaining a free ride on their established reputation, seeking to mislead and attract Internet users to the Respondent’s website, which constitutes bad faith. It is further remarkable that the inclusion of content obtained from the Complainant’s social media platform in the Respondent’s website, disrupt the Complainant’s business and may interfere with the privacy of the Complainant’s users, supporting a finding of bad faith. Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the Respondent registered and is using the disputed domain name in bad faith under the third element of paragraph 4(a) 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 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.
- 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”).
Sole Panelist
Date: April 19, 2021
Full & Egal Universal Law Academy