The Complainant is Fenix International Limited c/o Walters Law Group, United States of America (“United States”), represented by Walters Law Group, United States.
The Respondent is Domain Administrator, See PrivacyGuardian.org/ Achmad Yadi, Indonesia. 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 25, 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 1, 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 2, 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 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 25, 2021. An informal response was received on March 9, 2021. The proceeding was suspended in view of settlement discussions between the Parties on March 22, 2021, being reinstituted on May 26, 2021. The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on July 8, 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 provides a social media platform at “www.onlyfans.com” that allows users to post and subscribe to audiovisual content on the Internet under the ONLYFANS trademark. It is the owner, amongst others, of: - United States trademark registration No. 5,769,267 for ONLYFANS, registered on June 4, 2019, claiming first use in commerce on July 4, 2016; - United States trademark registration No. 5,769,268 for ONLYFANS.COM, registered on June 4, 2019, claiming first use in commerce on July 4, 2016; - European Union trademark registration No. 017912377 for ONLYFANS, registered on January 9, 2019; and - European Union trademark registration No. 017946559 for ONLYFANS & device, registered on January 9, 2019. The disputed domain name was registered on December 28, 2020, and has been used in connection with a webpage offering adult entertainment. Presently the disputed domain name does not resolve to an active webpage. 5. Parties’ Contentions A. Complainant The Complainant asserts to have registered the domain name According to the Complainant, the disputed domain name is identical or confusingly similar to its ONLYFANS trademark, not conferring the addition of the term “link” legitimate rights or interests in the disputed domain name to the Respondent. As to the absence of rights or legitimate interests, the Complainant argues that: i. the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name given that the disputed domain name has been used in connection with a commercial website that hosts adult entertainment content in direct competition with the Complainant’s services; ii. there is no evidence that indicates that the Respondent is known by the disputed domain name; and iii. the Respondent registered the disputed domain name because it is identical or confusingly similar to the Complainant’s Furthermore, the Complainant asserts that the Respondent registered the disputed domain name with actual or constructive knowledge of the Complainant’s trademark in view of the nature of the Respondent’s website which provides services in direct competition with the Complainant. In addition to that, the Complainant argues that, as past Panels have recognized, the use of a privacy service combined with a failure to submit a response should be additional evidence of bad faith registration. Lastly, the Complainant sent a cease-and-desist letter on January 25, 2021 to the Respondent which was not responded to and should be considered a further evidence of bad faith. B. Respondent On March 9, 2021, the Respondent sent an informal response stating that he had immediately deleted the website after having received notice of this proceeding, apologizing and stating that this would not happen again. 6. Discussion and Findings Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark 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. The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the disputed domain name. In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. A. Identical or Confusingly Similar The Complainant has established its rights in the ONLYFANS trademark. The Panel finds that the disputed domain name reproduces the Complainant’s mark in its entirety. The addition of the term “link” does not prevent a finding of confusing similarity. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a non‑exclusive list of circumstances that may indicate the Respondent’s rights to or legitimate interests in the disputed domain name. These circumstances are: (i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, in spite of not having acquired trademark or service mark rights; or (iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. In the present case, the Respondent’s past use of the disputed domain name in connection with a webpage offering adult entertainment in direct competition with the Complainant’s services clearly cannot be considered a bona fide offering of goods or services. In addition to that, the absence of any indication that the Respondent has been commonly known by the disputed domain name, or that it has acquired any registered trademarks or trade names corresponding to the disputed domain name corroborate with the indication of the Respondent’s lack of rights or legitimate interests in the disputed domain name. Moreover, the Panel notes that the Respondent has not asserted any rights or legitimate interests in respect of the disputed domain name in its informal response. On the contrary, the Respondent appears rather to have consented to the transfer of the disputed domain name, which may demonstrate that it has no legitimate interests in the disputed domain name. Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith The Policy indicates in paragraph 4(b)(iv) of the Policy that bad faith registration and use can be found in respect of the disputed domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. In this case, the use of the disputed domain name characterizes the Respondent’s intent of commercial gain by creating a likelihood of confusion in Internet users who are likely to believe that the disputed domain name is either connected, endorsed or authorized by the Complainant. Two other factors further corroborate the Panel’s finding of bad faith: the Respondent’s choice to retain a privacy protection service so as to conceal his true identity and the lack of reply to the cease-and-desist letter sent prior to this proceeding. For the reasons above, the Panel finds that the Respondent’s amounts to bad faith registration and use of the disputed domain name pursuant to paragraph 4(b)(iv) 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 Wilson Pinheiro Jabur
Sole Panelist
Date: July 14, 2021
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