The Complainant is Fenix International Limited c/o Walters Law Group, United States of America (“United States”).
The Respondent is Scripcariu Bogdan, Romania.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2021. On June 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 29, 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 9, 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 9, 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 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 12, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 7, 2021.
The Center appointed Tobias Malte Müller as the sole panelist in this matter on September 14, 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 BackgroundThe Complainant runs a social network platform on the Internet that allows users to post and subscribe to paywall protected audiovisual content, including adult entertainment services.
According to the Registrar’s verification response, the Respondent registered the disputed domain name on March 14, 2021. The language of the registration agreement at the time of registration was English.
The Complaint is based amongst others on the following word trademarks ONLYFANS, applied for before the date of registration of the disputed domain name, i.e.
- European Trade Mark Registration No. 017902377, registered on January 9, 2019, for goods and services in classes 9, 35, 38, 41, and 42;
- United States Trademark Registration No. 5,769,267, registered on June 4, 2019, for services in class 35.
It results from the undisputed evidence provided by the Complainant that the Disputed Domain Name currently resolves to a website that purports to all visitors to “access and view Premium OnlyFans Accounts for free” for “up to 180 days” through a “hack”. The Respondent even alleges to offer visitors the opportunity to illegally “download videos” from the Complainant’s services. For this purpose, the Respondent is reproducing certain aspects of the Complainant’s website, including the Complainant’s browser tap icon and color scheme combination of light blue, white, and black, and using similar fonts and lock icons.
Finally, it results from the undisputed evidence that Complainant sent a cease-and-desist letter to Respondent on April 20, 2021, demanding the Respondent stop using and transfer the Disputed Domain Name to Complainant. Respondent did not respond.
5. Parties’ Contentions A. ComplainantFirstly, the Complainant points out that the Disputed Domain Name is identical - or, at the very least, confusingly similar - to the Complainant’s registered trademarks. The Disputed Domain Name consists of the Complainant’s exact trademark with the only difference being the insertion of the term “unlock”, which does nothing to confer legitimate rights or interests in the Disputed Domain Name to Respondent.
Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In particular, the Complainant contends that (1) the Respondent has no connection or affiliation with the Complainant and has not received any authorization, license, or consent, whether express or implied, to use the trademarks in the Disputed Domain Name or in any other manner; (2) the Respondent is not commonly known by the trademarks and does not hold any trademarks for the Disputed Domain Name; (3) the Respondent cannot claim a right to use the Disputed Domain Name under fair use, since it includes the trademark and the additional term “unlock” which creates a risk of implied affiliation, because it suggests users can use the Disputed Domain Name to gain unauthorized access to paywall protected content on the Complainant’s services; (4) the website at the Disputed Domain Name contains a logo that is identical to the Complainant’s registered Logo.
Thirdly, the Respondent’s registration and use of the Disputed Domain Name constitutes – in the Complainant’s view – bad faith. Since the website featured a logo that is similar to Complainant’s ONLYFANS logo, it is more probable than not that the Respondent was fully aware of the Complainant and its ONLYFANS mark at the time of registration. Furthermore, Complainant sent a cease-and-desist letter to Respondent on April 20, 2021, demanding the Respondent stop using and transfer the Disputed Domain Name to Complainant and the Respondent did not respond. The Respondent’s failure to submit a response combined with the use of a privacy service is additional evidence of bad faith registration. Finally, using a logo that is similar to Complainant’s ONLYFANS logo on the website is further evidence of bad faith use and the Respondent’s activity is even more egregious, as the Respondent uses the Complainant’s exact logo on the website.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 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”.
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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 is satisfied that the registrant of record for the disputed domain name is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied.
A. Identical or Confusingly SimilarPursuant to paragraph 4(a)(i) of the Policy, the Complainant must first of all establish rights in a trademark or service mark and secondly establish that the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights.
The Complainant is the owner of several trademark registrations consisting of the verbal element ONLYFANS. See section 4 above.
Many UDRP panels have found that a Disputed Domain Name is confusingly similar to a complainant’s trademark where the Disputed Domain Name incorporates the complainant’s trademark in its entirety (e.g., F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt,WIPO Case No. D2015-1305; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack,WIPO Case No. D2015-0070). This Panel shares this view and notes that the Complainant’s registered trademarks ONLYFANS are fully included in the Disputed Domain Name.
Furthermore, it is the view of this Panel that the combination of the trademark ONLYFANS with the term “unlock” does not avoid the confusing similarity between the Disputed Domain Name and the Complainant’s trademarks. In fact, in accordance with the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8, where the relevant trademark is recognizable within the Disputed Domain Name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element. In the case at hand, the addition of the term “unlock” to the trademark does not prevent a finding of confusing similarity (see Motorola, Inc. v. Mr. Josip Broz,WIPO Case No. D2002-1063, for the term “unlocking”).
In the light of the above, the Panel finds that the Disputed Domain Name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate InterestsPursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to the Disputed Domain Name. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the Disputed Domain Name.
First, it results from the Complainant’s uncontested evidence that the Disputed Domain Name resolves to a website which purports to the visitors to “access and view Premium OnlyFans Accounts for free” for “up to 180 days” through a “hack”. The Respondent even alleges to offer visitors the opportunity to illegally “download videos” from the Complainant’s services. For this purpose, the Respondent is reproducing certain aspects of the Complainant’s website, including the Complainant’s browser tap icon and color scheme combination of light blue, white, and black, and using similar fonts and lock icons. In this Panel’s view, such use is clearly illegal and can therefore not be qualified as a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy. See section 2.13.1 of the WIPO Overview 3.0. Such use rather capitalizes on the reputation and goodwill of the Complainant’s trademarks.
Furthermore, the Panel notes that there is no evidence in the record or WhoIs information showing that the Respondent might be commonly known by the Disputed Domain Name in the sense of paragraph 4(c)(ii) of the Policy.
Finally, the Panel notes that there is no evidence in the record either showing that the Respondent might be making a noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue pursuant to paragraph 4(c)(iii) of the Policy. Firstly, the Disputed Domain Name is used for a purely commercial website, so that a “noncommercial” use is excluded from the outset. Furthermore, taking into account the construction of the Disputed Domain Name and the current use of the website at the Disputed Domain Name, the Panel finds that the Dipsuted Domain Name is such to carry a risk of implied affiliation that cannot confer rights or legitimate interests. See section 2.5.1 of the WIPO Overview 3.0. In particular, the Panel notes that the ONLYFANS trademark is reproduced in its entirety within the Disputed Domain Name and the figurative logo is displayed on the website to which the Disputed Domain Name resolves.
It is acknowledged that once the Panel finds a prima facie case has been established, the burden of production shifts to the Respondent to come forward with relevant and concrete evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithAccording to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the Disputed Domain Name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the Disputed Domain Name’s registration and use in bad faith.
One of these circumstances is that the respondent by using the Disputed Domain Name, has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location (paragraph 4(b)(iv) of the Policy).
It is the view of this Panel that these circumstances are met in the case at hand:
It results from the Complainant’s documented allegations that the Disputed Domain Name is connected to a website, which purports to the visitors to “access and view Premium OnlyFans Accounts for free” for “up to 180 days” through a “hack”. The Respondent even alleges to offer visitors the opportunity to illegally “download videos” from the Complainant’s services. For this purpose, the Respondent is reproducing certain aspects of the Complainant’s website, including the Complainant’s browser tap icon and color scheme combination of light blue, white, and black, and using similar fonts and lock icons. For the Panel, it is therefore evident that the Respondent positively knew the Complainant’s mark. Consequently, and in the absence of any evidence to the contrary, the Panel is convinced that the Respondent also knew that the Disputed Domain Name included the Complainant’s trademark when it registered the disputed domain name. Registration of the Disputed Domain Name which contains a third party’s mark, in awareness of said mark and in the absence of rights or legitimate interests, amounts to registration in bad faith (see e.g., KOC Holding A.S. v. VistaPrint Technologies Ltd,WIPO Case No. D2015-1910; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812; The Chancellor, Masters and Scholars of the University of Oxford v. Almutasem Alshaikhissa,WIPO Case No. D2014-2100; and Deutsche Lufthansa AG v. Mustermann Max, Muster AG,WIPO Case No. D2015-1320).
The finding of bad faith registration and use is supported by the further circumstances resulting from the case at hand (see section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition):
(i) the illegal use of the Disputed Domain Name;
(ii) the Disputed Domain Name including the Complainant’s trademark identically;
(iii) the Respondent’s failure to provide any evidence of actual or contemplated good faith use;
(iv) the Respondent’s failure to reply to the cease and desist letter and to submit a response;
(v) the implausibility of any good faith use to which the Disputed Domain Name may be put;
(vi) the Respondent concealing its identity behind a privacy shield.
In the light of the above the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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
Tobias Malte Müller
Sole Panelist
Date: September 28, 2021