The Complainant is Fenix International Limited c/o Walters Law Group, United States of America (“US”).
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / kadene wignall, Jamaica. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2021. On March 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 22, 2021, the Registrar transmitted by email to the Center its verification disclosing registrant and contact information for the Disputed Domain Name which differed from the contact information in the Complaint. The Center sent an email communication to the Complainant on March 23, 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 23, 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 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 18, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 20, 2021. The Center appointed Gabriela Kennedy as the sole panelist in this matter on April 27, 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 owns and operates the domain name The Complainant owns exclusive rights over the ONLYFANS trade mark. In particular, the Complainant is the proprietor of a number of trade mark registrations for the ONLYFANS mark in the European Union, United Kingdom, and US, including, inter alia, the ONLYFANS trade mark (Reg. No. 017912377) registered in the European Union on January 9, 2019, the ONLYFANS trade mark (Reg. No. UK00917912377) registered in the United Kingdom on January 9, 2019, and the ONLYFANS trade mark (Reg. No. 5,769,267) registered in the US on June 4, 2019. The Respondent registered the Disputed Domain Name on January 13, 2021. The Disputed Domain Name resolves to a website that allows visitors to purchase “likes” or “followers” in relation to the Complainant’s services. 5. Parties’ Contentions A. Complainant The Complainant’s primary contentions can be summarised as follows: (a) The Disputed Domain Name is confusingly similar to the Complainant’s ONLYFANS trade mark. The Disputed Domain Name incorporates the Complainant’s ONLYFANS trade mark in its entirety with the addition of the word “likes”. The word “likes” does not distinguish the Disputed Domain Name from the Complainant’s ONLYFANS trade mark; (b) The Respondent does not have any rights or legitimate interests in the Disputed Domain Name. The website to which the Disputed Domain Name resolves uses the Complainant’s mark and offers users the opportunity to purchase likes for profiles on the Complainant’s services. The Respondent’s use of the Disputed Domain Name does not constitute legitimate noncommercial or fair use. There is also no evidence to demonstrate that the Respondent has been commonly known by the Disputed Domain Name; and (c) The Respondent must have been aware of the Complainant’s rights in the ONLYFANS trade mark through actual or constructive knowledge when registering the Disputed Domain Name. The Respondent chose to conceal his identity by using a WhoIs privacy wall and failed to submit a Response or respond to the Complainant’s cease-and-desist letter. The Respondent is also using the Disputed Domain Name to sell “likes” or “followers” in relation to the Complainant’s services, which constitutes a violation of the Complainant’s Terms of Service. As such, the Respondent has registered and is using the Disputed Domain Name in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. The fact that the Respondent has not submitted a formal Response does not automatically result in a decision in favour of the Complainant. However, the Respondent’s failure to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complainant as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403). 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements: (i) the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; (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 by the Respondent in bad faith. A. Identical or Confusingly Similar The Panel accepts that the Complainant has registered rights in the ONLYFANS trade mark based on its various trade mark registrations. It is well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the Top-Level Domain extension (“.com” in this case,) may be disregarded. See section 1.11 of the WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Apart from the Complainant’s registered rights in the ONLYFANS trade mark, the Complainant also asserts that it has also established common law rights in the mark since July 4, 2016, which have been recognized by earlier UDRP panels as having acquired distinctiveness by at least May 30, 2017 (see Fenix International Limited v. c/o who is privacy.com / Tulip Trading Company, Tulip Trading Company Limited,WIPO Case No. DCO2020-0038; Fenix International Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Samuel Walton,WIPO Case No. D2020-3131; and Fenix International Limited v. Domains By Proxy, LLC, Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2020-3048), which was well before the date of registration of the Disputed Domain Name by the Respondent. As the Complainant has already established its registered rights in the ONLYFANS trade mark for the purposes of the Policy, the Panel sees no reason to deal with the issue of the Complainant’s unregistered common law rights in the ONLYFANS mark. The Disputed Domain Name incorporates the Complainant’s ONLYFANS trade mark in its entirety with the addition of the word “likes”. UDRP panels have consistently found that the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) to a mark will not alter the fact that the domain name at issue is confusingly similar to the mark in question. See section 1.8 of the WIPO Overview 3.0. The mere addition of the word “likes” does not prevent the Complainant’s ONLY FANS trademark from being recognizable in the Disputed Domain Name and therefore does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s ONLYFANS trade mark. As such, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s ONLYFANS trade mark, and accordingly, paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests Once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent in a disputed domain name, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0. The Panel accepts that the Complainant has not authorised the Respondent to use the ONLYFANS trade mark, and there is no relationship between the Complainant and the Respondent which would otherwise entitle the Respondent to use the ONLYFANS trade mark. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to show rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence. Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following: (i) before any notice to him 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 was in connection with a bona fide offering of goods or services; (ii) the Respondent has been commonly known by the Disputed Domain Name, even if he has acquired no trade mark 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 trade mark or service mark at issue. There is no evidence to suggest that the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services. The Panel finds that the use of the Disputed Domain Name cannot be regarded as legitimate noncommercial or fair use as the Disputed Domain Name resolves to a website that sells “likes” or “followers” in relation to the Complainant’s services. Such use of the Disputed Domain Name is also not a bona fide offering of goods or services. Moreover, the Panel finds that the Disputed Domain Name gives a false impression that the Disputed Domain Name is associated with and/or endorsed by the Complainant and is capable of misleading and diverting visitors away from the Complainant. Also, there is no evidence to prove that the Respondent has trade mark rights corresponding to the Disputed Domain Name, or that he has become known by the Disputed Domain Name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith UDRP panels have consistently found that the mere registration of a domain name that is confusingly similar to a widely-known trade mark by an unaffiliated entity (particularly domain names which incorporate a mark plus a descriptive term) can already by itself create a presumption of bad faith. See paragraph 3.1.4 of the WIPO Overview 3.0. The Complainant’s ONLYFANS trade mark appears to be fairly well known. A quick Internet search shows that the top search results returned for “ONLYFANS” are the Complainant’s official website and several third party websites making references to the Complainant’s products and services. Therefore, the Respondent must have been aware of the Complainant and its rights in the ONLYFANS trade mark when registering the Disputed Domain Name, particularly given that the Respondent’s website reproduces the Complainant’s ONLYFANS mark. The fact that the Disputed Domain Name incorporates the Complainant’s ONLYFANS mark in its entirety also creates a presumption of bad faith. In addition, the Panel finds that the following factors further support a finding that the Disputed Domain Name was registered and is being used by the Respondent in bad faith: (i) The Respondent failed to respond to the Complainant’s cease-and-desist letter and Complaint, and has provided no evidence of any actual or contemplated good faith use by him of the Disputed Domain Name; (ii) The Respondent registered the Disputed Domain Name using a privacy shield to conceal his identity (see Primonial v. Domain Administrator, PrivacyGuardian.org / Parla Turkmenoglu,WIPO Case No. D2019-0193); and (iii) It is difficult to conceive of any plausible use of the Disputed Domain Name that would amount to good faith use, given that the Disputed Domain Name is confusingly similar to the Complainant’s ONLYFANS trade mark and domain name In the circumstances, the Panel finds that the Respondent registered and has been using the Disputed Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied. 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, Gabriela Kennedy
Sole Panelist
Date: May 11, 2021
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