The Complainant is Fenix International Limited c/o Walters Law Group, United States of America (“United States”).
The Respondent is PrivacyGuardian.org, United States / The Responsive Agency Ltd, United Kingdom. 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 23, 2021. On March 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 24, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 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 amendment to the Complaint on March 29, 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 sent an informal response to the Center on April 1, 2021. The Center appointed Ian Lowe 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 owns and operates a website at “www.onlyfans.com” (the “Complainant’s Website”) providing a social media platform that allows users to post and subscribe to audiovisual content in the field of adult entertainment. It has operated the website under the “onlyfans” brand since at least January 2016. According to Alexa Internet, the Complainant’s Website is the 428th most popular website on the World Wide Web and one of the most visited in the world. The Complainant is the proprietor of a number of registered trademarks in respect of ONLYFANS (the “Mark”) including: European Union trademark number 17912377 registered on January 9, 2019; the comparable United Kingdom trademark number 917912377, created following the United Kingdom’s exit from the European Union and also treated as registered on January 9, 2019; and United States trademark number 5,769,267, registered on June 4, 2019. The Domain Name was registered on January 15, 2021 and now resolves to a single webpage featuring a large photograph of an electric fan and headed “A website for buying and selling electronic fans made in Thailand”. At the time of preparation of the Complaint, the Domain Name resolved to a website offering a subscription platform seeking to enter into profit sharing agreements with adult content entertainment providers in exchange for subscriptions, similar to the services provided at the Complainant’s Website. 5. Parties’ Contentions A. Complainant The Complainant contends that the Domain Name is confusingly similar to the Mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. B. Respondent After email exchanges with the Center in response to service of the Complainant, in which the Respondent stated that “I don’t understand what any of this means” and asking what the Complaint was about and what it was expected to do, the Respondent sent an informal response by email to the Center on April 1, 2021 stating: “I am not a lawyer so I really dont know what any of this means but I spoke to the client and they are not interested in using this domain for anything other than selling their electric fan products in Thailand.” 6. Discussion and Findings For this Complaint to succeed in relation to the Domain Name the Complainant must prove that: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and The Complainant has uncontested rights in the ONLYFANS trademark, both by virtue of its trademark registrations and as a result of the goodwill and reputation acquired through its use of the mark over a number of years. Ignoring the generic Top-Level Domain (“gTLD”) “.com”, the Domain Name comprises the entirety of the ONLYFANS trademark together with the insertion of the word “thai”. In the view of the Panel, the addition of this geographic reference to Thailand does not prevent a finding of confusing similarity between the Mark and the Domain Name. Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests The Complainant has made out a strong prima facie case that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent has used the Domain Name not in connection with a bona fide offering of goods or services, but for a website offering identical services to those provided by the Complainant. The Complainant has not authorised the Respondent to use its trademark in a domain name or in connection with its purported services. The Respondent has chosen not to respond formally to the Complaint or to take any serious steps to counter the prima facie case established by the Complainant. Instead, it appears that following service of the Complaint the Respondent arranged for the original content on the Respondent’s website to be deleted and to substitute a basic web page featuring a large photograph of an electric fan with the textual heading “A website for buying and selling electronic fans made in Thailand”. In the Panel’s view, this was no more than a cynical attempt to promulgate a legitimate use of the Domain Name after the event. In the circumstances, the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the Domain Name. C. Registered and Used in Bad Faith In the view of the Panel, given the nature of the Domain Name as indicated above, the use to which the Domain Name has been put, and the notoriety of the Complainant’s Website, the Panel considers it most likely that the Respondent had the Complainant and its rights in the ONLYFANS mark in mind when it registered the Domain Name. The Panel considers that the registration of such a domain name and the use of the Domain Name for a website providing similar to those provided by the Complainant, no doubt with a view to commercial gain, amounts to paradigm bad faith registration and use for the purposes of paragraph 4(b)(iv) of the Policy. The current use of the Domain Name is further evidence of the Respondent’s bad faith. Accordingly, the Panel finds that the Domain Name has been registered and is being used in bad faith. 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 Domain Name Ian Lowe
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Sole Panelist
Date: May 10, 2021
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