The Complainant is Fenix International Limited c/o Walters Law Group, United States of America (“United States”), represented internally.
The Respondent is Juan Anton, Onlyfanx, Peru. 2. The Domain Name and Registrar(s)
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 20, 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 23, 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 sent an email communication to the Complainant on March 24, 2021 providing the registrant and contact information disclosed by the Registrar. The Complainant filed an amendment to the Complaint on March 24, 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 April 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 21, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 22, 2021. The Center appointed Daniel Peña as the sole panelist in this matter on April 29, 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, 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 States. The Complainant holds trademark registrations that comprise the term “onlyfans” in various jurisdictions around the world, including the following: - European Union Trademark Registration No. 017912377 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 owns the domain name The disputed domain name was registered on January 16, 2021. The disputed domain name directs to a commercial website that offers adult entertainment content in direct competition with the Complainant’s services including providing entertainment services in the nature of a website featuring non-downloadable video, photographs, images, audio, and in the field of adult entertainment. 5. Parties’ Contentions A. Complainant The disputed domain name reproduces the ONLYFANS mark replacing the letter “s” by the letter “x”, 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 Respondent’s website uses the heading “Onlyfanx” that is confusingly similar to the Complainant’s ONLYFANS mark and offers adult entertainment content in direct competition with the services offered on 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. The fact that the Respondent’s website offers content that is in direct competition with the Complainant’s website corroborates the inference that the Respondent knew or should have known of the ONLYFANS mark at the time of registration of the disputed domain name. Other evidence of the Respondent’s bad faith includes the lack of response to a contact request sent by the Complainant to the Respondent through GoDaddy WhoIs “Contact Domain Holder” form on February 12, 2021. The Respondent intentionally registered and used the disputed domain name in an attempt to divert Internet traffic from the Complainant’s website to its website where it offers services in direct competition with the Complainant, including providing entertainment services in the nature of a website featuring non-downloadable video, photographs, images, audio, and in the field of adult entertainment. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark 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 in bad faith. Considering these requirements, the Panel finds as follows: A. Identical or Confusingly Similar The Panel holds that the disputed domain name The Panel is satisfied that the disputed domain name Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant bears the burden of proof in establishing this requirement. In view of the difficulties inherent in proving a negative and because the relevant information is mainly in the possession of the Respondent, it is enough for the Complainant to establish a prima facie case which, if not rebutted by sufficient evidence from the Respondent will lead to this ground being set forth. Refraining from submitting a Response, the Respondent has brought to the Panel’s attention no circumstances from which the Panel could infer that the Respondent has rights or legitimate interests in the disputed domain name. The Panel will now examine the Complainant’s arguments regarding the absence of rights or legitimate interests of the Respondent in connection with the disputed domain name. The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s trademarks in a domain name or in any other manner. The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b). The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a disputed domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; (ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location. In the Panel’s view a finding of bad faith may be made where the Respondent “knew or should have known” of the registration and/or use of the Complainant’s trademark prior to registering the disputed domain name. In this case, the widespread commercial recognition of the Complainant’s ONLYFANS mark is such that the Respondent, must have had knowledge of the trademark before registering the disputed domain name. The Panel finds that the Respondent has registered the disputed domain name The use of the disputed domain name to direct to the Respondent’s website offering services that compete with the Complainant’s services, including providing entertainment service in the nature of a website featuring non-downloadable video, photographs, images, audio, an in the field of adult entertainment is evidence of bad faith, as the Respondent is using the disputed domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. Finally, the Panel also finds that the Respondent’s failure to take part in the present proceedings constitutes an additional indication of its bad faith. The Panel finds that the evidence produced in this case taken as a whole clearly supports a finding that the Respondent registered and is using the disputed domain name 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 Daniel Peña
- European Union Trademark Registration No. 017946559 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. UK00917912377 ONLYFANS, word, registered on January 9, 2019, in classes 9, 35, 38, 41 and 42; and
- United Kingdom Trademark Registration No. UK00917946559 ONLYFANS, figurative, registered on January 9, 2019, in classes 9, 35, 38, 41, and 42, (collectively the “ONLYFANS mark”).
Sole Panelist
Date: May 11, 2021
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