The Complainant is Fenix International Limited c/o Walters Law Group, United States of America (“United States”).
The Respondents are Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / OnlyFan Free, France, and Dilshan Omantha, Sri Lanka, and Whois Privacy, Private by Design, LLC, United States / Anaïs Busson, France (collectively, the “Respondent”). 2. The Domain Names and Registrars
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 28, 2021. On May 31, 2021, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Domain Names. On May 31, 2021, the First Registrar and the Second Registrar each transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 1, 2021 providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 1, 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 June 3, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 23, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 28, 2021. The Center appointed Karen Fong as the sole panelist in this matter on July 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 owns and operates the website located at the domain name The Complainant is considered by Alexa, the web analytics website, as the 379th most popular website on the Internet. The Complaint involves three Domain Names which are registered to the Respondents as detailed below: No Domain Name Registrant Date of Registration Comments 1 OnlyFanFree September 20, 2020 Domain Name 1 is registered in the name of a privacy service. The underlying Registrant has a French address. The website connected to Domain Name 1 formerly featured adult entertainment content including such content pirated from the users of the Complainant’s website (“Website 1”). Domain Name 1 currently does not resolve to an active website. 2 Dilshan Omantha March 18, 2021 Domain Name 2 is in the name of the same privacy service as Domain Name 1. The underlying Registrant has a Sri Lankan address. He is also the respondent in another UDRP case involving a domain name comprising the Complainant’s Trade Mark 3 Anaïs Busson October 8, 2020 Domain Name 3 is registered in the name of a privacy service. The underlying Registrant has a French address. Domain Name 3 redirects to a website at “www.getfappy.com” which features adult entertainment content including such content pirated from the users of the Complainant’s website (“Website 3”, together with Website 1 and Website 2, the “Websites”). 5. Parties’ Contentions A. Complainant The Complainant contends that the Domain Names are identical or confusingly similar to the Trade Mark, the Respondents have no rights or legitimate interests with respect to the Domain Names, and that the Domain Names were registered and are being used in bad faith. The Complainant requests transfer of the Domain Names, all of which it believes are related and under management and common control of a single entity or network. The basis of its belief that the Registrants are related and under management and common control of a single network are set out in the table above. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Preliminary Procedural Issue – Consolidation of the Proceeding Paragraph 4(f) of the Policy allows a panel to consolidate multiple disputes between parties at its sole discretion and paragraph 10(e) of the Rules empowers a panel to consolidate multiple domain name disputes in accordance with the Policy and the Rules. Neither the Policy nor the Rules expressly provide for the consolidation of multiple respondents in a single administrative proceeding. In fact, paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name provided that the domain names are registered by the same domain name holder. The panel in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons,WIPO Case No. D2010-0281 reviewed the relevant UDRP decisions in relation to consolidation in multiple respondents’ cases and extracted the following general principles: “1. Consolidation of multiple registrants as respondents in a single administrative proceeding may in certain circumstances be appropriate under paragraphs 3(c) or 10(e) of the Rules provided the complainant can demonstrate that the disputed domain names or the websites to which they resolve are subject to common control, and the panel having regard to all of the relevant circumstances, determines that consolidation would be procedurally efficient and fair and equitable to all parties. 2. The administrative provider should act as a preliminary gatekeeper in such cases by determining whether or not such complaints fulfill the requisite criteria. Once a case is admitted on a prima facie basis, the respondent has the opportunity to make its submissions on the validity of the consolidation together with its substantive arguments. In the event that the panel makes a finding that the complaint has not satisfied the requisite criteria, the complainant is not precluded from filing the complaint against the individual named respondents.” In this case, the Complainant has provided good evidence referred to above to substantiate its case that the Respondents are either one and the same person, entity, or network, and are somehow connected to each other and under common control aimed at intentionally infringing the Complainant’s marks. Accordingly, applying the principles to the facts in this case, the Panel finds that the Complainant has established more likely than not that the Domain Names are subject to common ownership or control. The Panel finds such common control to justify consolidation of the Complainant’s claims against the registrants of the Domain Names in this proceeding. The Panel further concludes in the circumstances of this case that consolidation would be fair and equitable to all parties and procedurally efficient, and therefore will allow the consolidation as requested by the Complainant pursuant to paragraph 10(e) of the Rules. 7. Discussion and Findings 7.1. General According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that: (i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark. The threshold test for confusingly similarity involves the comparison between the trade mark and the domain name itself such that the trade mark would generally be recognizable within the domain name. In this case the Trade Mark is reproduced in its entirety (or with an unnoticeably slight variation) in the Domain Names. Domain Name 1 comprises the ONLYFANS trade mark with the deletion of the letter “s” (so that it reads as a singular) and the addition of the word “free”. Domain Name 2 comprises the Trade Mark in its entirety with the addition of the words “video leaks” and Domain Name 3 comprises the Trade Mark in its entirety with the addition of the words “leaked videos”. The addition of the terms in all three Domain Names and the subtraction of the letter “s” in relation to Domain Name 1 together with the fact that all three Websites connected to the Domain Names offer adult content taken from the Complainant’s website shows a clear intention on the part of the Respondent to target the Trade Mark through the Domain Names. See the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.15. In any event, the inclusion of the descriptive terms to the Domain Names does not prevent a finding of confusing similarity between the Domain Names and the Trade Mark. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the various generic Top-Level Domain (“gTLD”) suffixes which in this case are “.com”. For the reasons above, the Panel finds that the Domain Names are confusingly similar to the Trade Marks in which the Complainant has rights. B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the domain name by demonstrating any of the following: (i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers. Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant. The Complainant contends that it is not affiliated with the Respondent and has not licensed or otherwise authorised the Respondent to use the Trade Mark or register the Domain Names. It would not appear that the Respondent is commonly known by the Domain Names. The Respondent’s unauthorised use of the Trade Mark in the Domain Names in relation to adult entertainment content including such content pirated from the Complainant’s website in direct competition with the Complainant’s services is not bona fide or legitimate noncommercial or fair use of the Domain Names. The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Names. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names. C. Registered and Used in Bad Faith To succeed under the Policy, the Complainant must show that the Domain Names have been both registered and used in bad faith. It is a double requirement. The Panel is satisfied that the Respondent must have been aware of the Trade Mark when it registered the Domain Names particularly since the Websites contain content pirated from the Complainant’s users and the descriptive words in the Domain Names show a clear targeting and reference to the Complainant. Further the fact that the Domain Names are registered in the names of nominally different registrants subject to common control evidences a lack of transparency which is typical of a cybersquatter. It is implausible based on the record as set out above that the Respondent was unaware of the Complainant when it registered the Domain Names. In the WIPO Overview 3.0, section 3.2.2 states as follows: “Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.” The fact that there is a clear absence of rights or legitimate interests coupled with no explanation for the Respondent’s choice of the Domain Names is also a significant factor to consider (as stated in section 3.2.1 of WIPO Overview 3.0). In light of the above, the Panel finds that registration is in bad faith. The Domain Names are also used in bad faith. The Websites offer content that include adult content taken from the users of the Complainant’s website. These Websites have been set up for the commercial benefit of the Respondent. It is highly likely that Internet users when typing the Domain Names into their browser or finding them through a search engine would have been looking for a site operated by the Complainant rather than the Respondent. The Domain Names are likely to confuse Internet users trying to find the Complainant’s official website. Such confusion will inevitably result due to the incorporation of the Trade Mark as the most prominent element of the Domain Names. The Respondent employs the reputation of the Trade Mark to mislead users into visiting the websites connected to the Domain Names instead of the Complainant’s. From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Respondent’s Websites are authorised or somehow connected to the Complainant. The Panel therefore concludes that the Domain Names were registered and are being used in bad faith under paragraph 4(b)(iv) of the Policy. Further, the Respondent in pre-proceeding correspondence, also attempted to obtain monetary settlement for the transfer of the Domain Names. This also amounts to bad faith registration and use under paragraph 4(b)(i) of the Policy. 8. 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 Names, Karen Fong
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names were registered and are being used in bad faith. 7.2. Substantive Analysis A. Identical or Confusingly Similar
Sole Panelist
Date: August 6, 2021
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