The Complainant is Fenix International Limited c/o Walters Law Group, United States of America (“United States”).
The Respondent is Yelyzaveta Seletska, Ukraine. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2021. On June 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 25, 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 July 2, 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 July 2, 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 July 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 5, 2021. The Center appointed Philippe Gilliéron as the sole panelist in this matter on August 9, 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 under the domain name The Complainant owns several trademarks registered on a worldwide basis, such as: - European Union verbal trademark ONLYFANS No. EU017912377 registered on January 9, 2019 with a priority date as of June 5, 2018 under classes 9, 35, 38, 41 and 42. - European Union combined trademark ONLYFANS No. EU017946559 registered on January 9, 2019 with a priority date as of August, 22, 2018 under classes 9, 35, 38, 41 and 42. - US verbal trademark ONLYFANS No. 5,769,267 registered under class 35 on June 4, 2019 with a first use in commerce dated from July 4, 2016. - US verbal trademark ONLYFANS.COM No. 5,769,268 registered under class 35 on June 4, 2019 with a first use in commerce dated from July 4, 2016. The Complainant carries out its activities through the domain name On April 12, 2021, the Respondent registered the disputed domain name The Complainant argues that the disputed domain name is identical or confusingly similar to its trademark as it entirely reproduces its trademark ONLYFANS with a typo (“i” instead of “y”) and that the TLD “.site” has to be disregarded under the confusing similarity test. The Complainant then alleges that the Respondent has no rights or legitimate interests in the domain name. The Complainant has never granted a license or authorized the Respondent to use its trademarks, and the Respondent is not commonly known under that name. The Complainant finally considers that, taking into account the reputation of its trademark and the reproduction of such trademarks on the website attached to the disputed domain name, the Respondent was obviously aware of the Complainant’s trademarks. As a result of such reputation and awareness of the Complainant’s rights, the Complainant considers that the use of The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs this Panel to “[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred: (i) the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a 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. A. Identical or Confusingly Similar The Complainant proves to hold several trademarks consisting of the terms ONLYFANS. UDRP panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark for purpose of the Policy (see, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services,WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358; and F. Hoffmann-La Roche AG v. Relish Entreprises, WIPO Case No. D2007-1629). Such is the case here. Considering the fact that the TLD has to be disregarded under the first element confusing similarity test, the disputed domain name is a typosquatted version of the Complainant’s trademark, where the “y” has merely been replaced by an “i”, a difference obviously irrelevant to exclude the resulting confusing similarity between the disputed domain name and the Complainant’s trademark (section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied. B. Rights or Legitimate Interests According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name. As the panel stated in Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624, demonstrating that the Respondent has no rights or legitimate interests in the domain name “would require complainant to prove a negative, a difficult, if not impossible, task”. Thus, in that decision, the panel opined that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion”. Following that decision, subsequent UDRP panels acknowledged that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, the burden of production shifts to the respondent to come forward with evidence to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied to paragraph 4(a)(ii) of the Policy (see, e.g., section 2.1 WIPO Overview 3.0). In the present case, the Complainant is the owner of several ONLYFANS trademarks. The Complainant has no business or other relationships with the Respondent. The Complainant thus has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name. On her side, the Respondent has not answered to the Complaint. Considering the absence of a Response and the fact that the Respondent is neither commonly known by the disputed domain name, nor has made a legitimate noncommercial or fair use of the disputed domain name, the Panel finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name. Consequently, in light of the above, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled. C. Registered and Used in Bad Faith For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)). Bad faith requires the Respondent to be aware of the Complainant’s trademarks. In the present case, the Complainant owns several ONLYFANS trademarks, which enjoy a strong reputation. Taking into account the fact that the website attached to the disputed domain name replicates the Complainant’s official website and reproduces as a result the Complainant’s official trademark and logo, there is no doubt that the Respondent was perfectly aware of the Complainant’s trademarks when she registered the disputed domain name. The disputed domain name resolves to a website that is identical to the Complainant’s official website, and reproduces the Complainant’s official logo. As a result, a visitor who unknowingly visits the disputed domain name seeking to access the Complainant’s services after having made a typo may input its log-in credentials into the Respondent’s site, allowing the Respondent to harvest the usernames and passwords of the Complainant’s users an apparent phishing attempt. Such a use of a domain name, in a blatant infringement of the Complainant’s trademark rights, obviously amounts to a use in bad faith (see, for instance: Fenix International Limited v. Leandro Vinicius Bau,WIPO Case No. D2021-0584). Consequently, the Panel is of the opinion that 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 Philippe Gilliéron
Sole Panelist
Date: August 23, 2021
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