The Complainant is Fenix International Limited c/o Walters Law Group, United States of America (“United States”), represented internally.
The Respondent is Danesco Trading Ltd., Cyprus / AVO Ltd AVO Ltd, Seychelles. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2021. On March 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On March 24, 2021 the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 29, 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 amended Complaint on March 30, 2021. The Center verified that the Complaint together with the amended 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 further owns the domain name The disputed domain names were all registered on January 25, 2021. The disputed domain names direct to commercial websites that offer adult entertainment content in competition with the Complainant’s services. 5. Parties’ Contentions A. Complainant The disputed domain names reproduce the ONLYFANS mark entirely or sometimes deleting the letter “s” and adding the expressions “free sex” and “free porn”, which do not avoid the Complainant’s trademark being recognizable within the disputed domain names; thus, being the disputed domain names confusingly similar to this trademark. The Respondent has no rights or legitimate interests in the disputed domain names. No evidence indicates that the Respondent is known by the terms included in the disputed domain names, and the Respondent has no authorization to use the Complainant’s trademark. The Respondent’s website uses the ONLYFANS mark and offers content from the Complainant’s platform in direct competition with the Complainant’s services. The disputed domain names were registered and are 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 names. The fact that the Respondent’s websites offer 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 names. Other evidences of the Respondent’s bad faith are the use of a privacy service for the registration of the disputed domain names, and the lack of response to the cease and desist letter sent by the Complainant on February 19, 2021. The Respondent intentionally registered and used the disputed domain names in an attempt to divert Internet traffic from the Complainant’s website to a site providing access to misappropriated copyright-protected content from the Complainant’s platform, which disrupts the Complainant’s business, depriving the Complainant and its users of revenue, and evidences the Respondent’s bad faith. 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; Considering these requirements, the Panel rules as follows: A. Identical or Confusingly Similar The Panel finds that the disputed domain names are confusingly similar to the Complainant’s ONLYFANS marks. The Respondent’s incorporation of the Complainant’s mark in full in the disputed domain names is evidence that the disputed domain names are confusingly similar to the Complainant’s marks. Mere fact of deleting the final letter “s” and the addition of the dictionary words “free”, “sex” and “porn” to the Complainant’s trademark ONLYFANS do not prevent a finding of confusing similarity with the Complainant’s marks. Furthermore, the addition of the generic Top-Level Domain “(gTLD”) “.com” is not sufficient to prevent the confusing similarity either. The Panel is satisfied that the disputed domain names are identical or confusingly similar to the Complainant’s mark and the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests 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 names. The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names. 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 any 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 names. 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 names. The Complainant claims that 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 names, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b). Furthermore, the disputed domain names direct to commercial websites that offer adult entertainment content in competition with the Complainant’s services. Such use for deliberately attracting Internet users to its website in the mistaken belief that it is a website of the Complainant, or otherwise linked to or authorized by the Complainant supports a finding that the Respondent lacks rights or legitimate interests in the disputed domain names. The Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain names 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 trademark prior to registering the disputed domain name. In this case, the Complainant submits that at the date of registration of the disputed domain names the Respondent would have had constructive, if not actual knowledge of the Complainant’s mark ONLYFANS. On the evidence set out above the Complainant had been using its mark for more than four years. The Complainant’s website is also amongst the most popular websites in the world for this type of services. The Panel takes into account the evidence of the use being made of the disputed domain names. It is apparent, as it is pointed out by the Complainant, that the Respondent registered the disputed domain names with the addition of expressions “free sex” and “free porn” in an attempt to cause a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites. In the absence of a rebuttal of these submissions in a full Response, the Panel finds that the disputed domain names were registered in bad faith. The Complainant also relies upon the fact that the Respondent failed to respond to a cease and desist letter sent by the Complainant’s lawyers on February 19, 2021, in which the Complainant requested the Respondent should stop using and transfer the disputed domain names. The Panel follows earlier UDRP decisions and finds that a failure to respond to such a letter can be further prima facie evidence of bad faith. The Complainant points out that the Respondent is hiding its identity behind a WhoIs privacy wall. It is well-established that this, too, can be further prima facie evidence of bad faith. Having considered the Complainant’s submissions and in the absence of a Response, the Panel accepts the Complainant’s submission that on the evidence there is no plausible circumstance under which the Respondent could legitimately register or use the disputed domain names. Consequently, the Panel finds that the disputed domain names were registered and used by the Respondent in bad faith within Paragraph 4(a)(iii) 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 names 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”).
(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.
Sole Panelist
Date: May 11, 2021
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