Complainant is Fenix International Limited c/o Walters Law Group, United States of America (“United States”).
Respondent is Jason Salinas, Jason Shop, 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 June 30, 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 July 1, 2021, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on July 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 27, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 29, 2021. The Center appointed Jordan S. Weinstein as the sole panelist in this matter on August 10, 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 Complainant is the record owner of European Union trademark registration numbers 017912377 and 017946559, registered January 9, 2019 for the word mark ONLYFANS and its stylized version, respectively. Complainant also owns United States registration numbers 5769267 and 5769268, both registered June 4, 2019, for the marks ONLYFANS and ONLYFANS.COM, respectively. The Disputed Domain Name was registered on March 3, 2021. It formerly resolved to a website offering adult entertainment content and adult dating services in direct competition with Complainant’s website. As of this decision, the Disputed Domain Name does not resolve to an active website. 5. Parties’ Contentions A. Complainant Complainant asserts that it owns and operates the website linked to the domain name Complainant asserts that it registered the domain name Complainant asserts that as of 2021, its Complainant asserts that its unregistered common-law rights in the Marks have been recognized in several previous UDRP decisions as having accrued and acquired distinctiveness by no later than May 30, 2017. Complainant also asserts that its trademark rights have been recognized in nearly 20 other UDRP decisions, resulting in transfer of the subject domain names to Complainant. Complainant asserts that Respondent registered the Disputed Domain Name on March 3, 2021, and because Complainant has used its Marks since at least June 4, 2016, and has obtained rights in its registered Marks at least as early as June 5, 2018, Complainant’s rights pre-date Respondent’s registration of the Disputed Domain Name. Complainant asserts that the Disputed Domain Name is identical or confusingly similar to Complainant’s Marks because the Disputed Domain Name is a typosquatted version of the Marks that includes an additional letter “x” between the letters “n” and “s” in the Marks. Complainant asserts that the letter “x” is near the letter “s” on a normal qwerty-type keyboard, making a typo mistake more likely. Complainant asserts that the use of the “.space” Top-Level Domain (“TLD”) in the Disputed Domain Name does not change the result, as the TLD generally will be disregarded under the first element confusing similarity test. Complainant asserts that Respondent has neither rights nor legitimate interest in the Disputed Domain Name because Respondent has no connection or affiliation with Complainant and has not received any authorization, license, or consent, whether express or implied, to use Complainant’s Marks in the Disputed Domain Name or in any other manner. Complainant further asserts that Respondent is not commonly known by Complainant’s Marks and holds no trademarks for the Disputed Domain Name. Complainant asserts that there is no evidence indicating that Respondent is known by the text of the Disputed Domain Name. Complainant asserts that the website linked to the Disputed Domain Name offers adult entertainment services in direct competition with Complainant’s services offered under Complainant’s Marks, and that such direct competition under the Disputed Domain Name does not give rise to legitimate rights or interest in Respondent. Complainant asserts that the Disputed Domain Name was registered and is being used in bad faith because the Disputed Domain Name is a typosquatted version of Complainant’s Marks that resolved to a website in direct competition with Complainant. Complainant asserts that it sent a cease-and-desist letter to Respondent on April 2, 2021, to which respondent made no response. Complainant asserts that Respondent’s failure to respond to Complainant’s letter is further evidence of Respondent’s bad faith. Complainant asserts that there is no possible circumstance under which Respondent could legitimately register or use the Disputed Domain Name. Thus, Respondent’s registration of the Disputed Domain Name, in connection with a website offering adult entertainment services in direct competition with Complainant’s website, indicates that Respondent registered the Disputed Domain Name to divert Internet traffic from Complainant’s website to a website offering competing services, and constitutes bad faith use of the Disputed Domain Name. Complainant requests that the Disputed Domain Name be cancelled, as opposed to transferred, because Complainant does not want to take possession of the Disputed Domain Name or the vast number of domains infringing on Complainant’s Marks. Complainant confirms its understanding that the Disputed Domain Name can potentially be re-registered after it is cancelled. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Applicable Policy Provisions Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements in order to prevail in this proceeding: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) 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. Paragraph 4(b) of the Policy states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that [respondent has] registered or acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name; or (ii) [respondent has] registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [respondent has] engaged in a pattern of such conduct; or (iii) [respondent has] registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the disputed domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other online location, by creating a likelihood of confusion with complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of [its] website or location or of a product or service on [its] website or location. These circumstances are non-exhaustive, and a UDRP panel may consider other circumstances as constituting registration and use of a domain name in bad faith. According to paragraph 4(c) of the Policy, a respondent may demonstrate rights to or legitimate interests in a domain name by any of the following, without limitation: “(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.” Where a respondent is in default, a UDRP panel may draw such inferences as it considers appropriate. Rules, paragraph 14(b). B. Findings 1. Identical or Confusingly Similar The Panel finds that the Disputed Domain Name The Panel finds that Complainant has provided sufficient evidence to establish paragraph 4(a)(i) of the Policy. 2. Rights or Legitimate Interests Complainant has made a prima facie case under paragraph 4(a)(ii) of the Policy by showing that Respondent has no connection or affiliation with Complainant and no authorization, license, or consent to use Complainant’s Marks in the Disputed Domain Name, and that Respondent is not commonly known by Complainant’s Marks and holds no trademarks for the Disputed Domain Name. Once Complainant makes its prima facie case of no rights or legitimate interests, the burden of production shifts to Respondent to come forward with appropriate evidence demonstrating rights or legitimate interests in the Disputed Domain Name. SeeWIPO Overview 3.0, section 2.1. Respondent failed to come forward with allegations or evidence demonstrating either rights or legitimate interests in the Disputed Domain Name. Further, Respondent’s failure to file a Response, and its failure to respond to Complainant’s cease-and-desist letter, permit the Panel to make an inference that Respondent has no rights or legitimate interests in the Disputed Domain Name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse,WIPO Case No. D2000-1221. As a result, the Panel finds that Complainant has established paragraph 4(a)(ii) of the Policy. 3. Registered and Used in Bad Faith The Panel finds that Complainant has provided sufficient evidence to satisfy paragraph 4(b)(iv) of the Policy, namely that by using the Disputed Domain Name, Respondent intentionally intended to attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. The Disputed Domain Name is identical to Complainant’s Marks with the exception of a spurious additional letter “x” that was clearly intended to take advantage of careless typing. Furthermore, the confusingly-similar Disputed Domain Name formerly resolved to a website in direct competition with Complainant’s website. The fact that the Disputed Domain Name no longer resolves to an active website does not prevent the finding of bad faith under the doctrine of passive holding. See WIPO Overview 3.0, section 3.3. Furthermore, Respondent failed to answer the Complaint, and failed to respond to a cease-and-desist letter from Complainant. From these circumstances the Panel may therefore draw an inference that Respondent was aware of Complainant’s Marks and website, and chose the Disputed Domain Name in an effort to capitalize on its confusing similarity to the Marks and the reputation of Complainant’s Marks. Therefore, the Panel finds that Respondent has registered and is using the Disputed Domain Name 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 Disputed Domain Name Jordan S. Weinstein
Sole Panelist
Date: August 22, 2021
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