The Complainant is Fenix International Limited c/o Walters Law Group, United States of America (“United States”).
The Respondent is Tony Lear, midieast corp., United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2021. On April 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 28, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 4, 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 May 4, 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 May 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 30, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 31, 2021. The Center appointed Evan D. Brown as the sole panelist in this matter on June 8, 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 provides a social media platform that allows users to post and subscribe to audiovisual content. It uses the ONLYFANS trademark in connection with these services, and owns a number of registrations for that mark, including United States Reg. No. 5,769,267, registered on June 4, 2019 and setting forth a date of first use in commerce of July 4, 2016. The disputed domain name was registered on July 9, 2018. The website at the disputed domain name is a tube site that hosts adult entertainment content (including content pirated from the Complainant’s users) in direct competition with the Complainant’s services. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademarks; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in 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; (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. The Panel finds that all three of these elements have been met in this case. A. Identical or Confusingly Similar A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. See, Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen,WIPO Case No. D2014-0657. The Complainant has demonstrated its rights because it has shown that it is the owner of the registered mark ONLYFANS as noted above. The Complainant has also submitted evidence of its common law rights in the mark that predate the trademark registrations. The incorporation of a trademark in its entirety is sufficient to establish that a disputed domain name is identical or confusingly similar to the Complainant’s registered mark. See, Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505. In this case, the disputed domain name contains the Complainant’s trademark ONLYFANS in its entirety. The addition of the Top-Level Domain “.com” and the words “models” and “of” to the disputed domain name does not prevent a finding of confusing similarity. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark. B. Rights or Legitimate Interests The Complainant has successfully established a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The use of the disputed domain name to set up a website to purportedly offer services that could be mistaken for those offered by the Complainant is not a bona fide or noncommercial offering of services. Volvo Trademark Holding AB v. Volvo India India, Volvo India,WIPO Case No. D2019-2170. The Complainant never licensed or otherwise authorized the Respondent to use the ONLYFANS mark within the disputed domain name. Furthermore, the Respondent appears to offer services in competition with those of the Complainant on the website resolving from the disputed domain name, and also makes available pirated versions of content uploaded by the Complainant’s users. The Respondent did not provide a response in this action, and nothing in the record serves to rebut the prima facie showing that the Complainant has made. The Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith The Complaint succeeds under the third element as well. This case illustrates the example of evidence of bad faith set out in paragraph 4(b)(iv) of the Policy, namely, using a recognized mark to “attempt[ ] to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.” Given that the Respondent has used the disputed domain name to offer adult content similar to content offered through the Complainant’s platform, and at times making available content pirated from the Complainant’s users, there is no question of the Respondent’s knowledge of the Complainant, its products, and its trademarks at the time of registration of the disputed domain name. From that knowledge and those efforts, targeting the value of those marks in bad faith may be readily inferred. See, Philip Morris Products S.A. v. Registration Private, Domains By Proxy, LLC / Munawar Ali and Perfect Privacy, LLC / Mohammad Ali Bhutto,WIPO Case No. D2019-0227; Iveco S.p.A. v. Cong ty TNHH san xuat va TM Khang Thinh, NA,WIPO Case No. D2015-2249. Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith by the Respondent. 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 Evan D. Brown
Sole Panelist
Date: June 23, 2021
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