The Complainant is Fenix International Limited c/o Walters Law Group, United States of America (“United States”).
The Respondent is Leandro Vinicius Bau, Brazil. 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 25, 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 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 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 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; 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. The Complainant further owns the domain name The disputed domain name was registered on December 27, 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 Portuguese language, which reproduced the Complainant’s login website, including various references to the ONLYFANS mark and a form to apparently login or reset the password to access the Complainant’s social media platform. This website contained a form to introduce the email address of the Complainant’s platform user, its current password and a new password, providing as well an option to apparently log into the Complainant’s platform through Twitter or Google. This website further included links to various sections of the Complainant’s website at “www.onlyfans.com”, namely to the Complainant’s FAQs, Terms, Privacy, Contact, How it Works, Referrals and USC 2257 sections. 5. Parties’ Contentions A. Complainant Key contentions of the Complaint may be summarized as follows: The disputed domain name incorporates the ONLYFANS mark adding the generic term “password”, being the Complainant’s trademark recognizable, and the disputed domain name confusingly similar to this mark. 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 ONLYFANS mark. The Respondent is using a copycat site of the Complainant’s login layout, to collect login credentials of deceived users for the Complainant’s website as well as other third parties’ websites (Twitter and Google) in an apparent phishing fraud attempt. 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 content of the Respondent’s website, including a login form that reproduces the one used in the Complainant’s website, corroborates the bad faith registration and use of the disputed domain name. The Respondent registered and used the disputed domain name in an attempt to divert Internet traffic from the Complainant’s site providing an unauthorized access point that requires providing login information in an apparent phishing attempt. Such use for an illegal activity is a clear evidence of bad faith. Further evidence of the Respondent’s bad faith is its lack of response to the cease and desist letter sent by the Complainant on January 25, 2021. 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. 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, adding the term “password” separated by a hyphen and the generic Top -Level Domain (“gTLD”) “.com”, which is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity. Therefore, the Panel considers that the ONLYFANS mark is recognizable in the disputed domain name. Accordingly, the 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. See sections 1.7, 1.8 and 1.11, WIPO Overview 3.0. 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, according to the evidence provided by the Complainant, the Panel notes that the disputed domain name has been used in connection to a website allegedly reproducing the Complainant’s login and reset password website, including various references to the ONLYFANS mark and links to various sections of the Complainant’s website. This website may deceive the Internet users to collect login credentials and other sensible information in an apparent phishing scam, 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. See section 2.5.1, WIPO Overview 3.0. The disputed domain name incorporates the Complainant’s trademark in its entirety adding the term “password” that may point to the Complainant’s platform regarding its reset and login site. The Respondent’s website further reproduces the Complainant’s reset and login website, including various references to the ONLYFANS mark and direct links to various sections of the Complainant’s website. 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. Apparently, the Respondent’s reaction to the Complainant’s contentions has been to take down the website that was linked to 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 itself of the website that was linked to the disputed domain name, clearly intended for generating confusion with the Complainant’s reset and login website, it is easy to conclude the Respondent’s bad faith. Additionally, the fact that the Respondent’s apparent reaction to the Complainant’s contentions has been taking down the website that was linked to the disputed domain name corroborates the Respondent’s bad faith. The fact that the disputed domain name no longer resolves to an active website does not prevent a finding of bad faith under the doctrine of passive holding. See section 3.3, WIPO Overview 3.0. Therefore, on the balance of probabilities, taking into consideration all cumulative circumstances of this case, the Panel considers that the disputed domain name was registered targeting the Complainant’s website 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, and disrupting the Complainant’s business. The disputed domain name and the Respondent’s website intentionally created confusion with the Complainant’s website, probably for a commercial gain or any other sort of benefit derived from the information obtained through the reset and login form provided in the Respondent’s website, under a phishing scam, which constitutes 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
- 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 23, 2021
Full & Egal Universal Law Academy