The Complainant is Fenix International Limited c/o Walters Law Group, United States of America (“United States”).
The Respondent is Said Saad, Morocco.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2021. On July 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 19, 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 21, 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 21, 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 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 24, 2021.
The Center appointed Luca Barbero as the sole panelist in this matter on August 31, 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 owns and operates a social media platform at
The Complainant is the owner of several trademark registrations for ONLYFANS, including the following, as per trademark certificates submitted as annexes to the Complaint:
- European Union trademark registration No. 017946559 for ONLYFANS (figurative mark), filed on August 22, 2018, and registered on January 9, 2019, in international classes 9, 35, 38, 41, and 42;
- European Union trademark registration No. 017912377 for ONLYFANS (word mark), filed on June 5, 2018, and registered on January 9, 2019, in International classes 9, 35, 38, 41, and 42;
- United States trademark registration No. 5769267 for ONLYFANS (word mark), filed on October 29, 2018, and registered on June 4, 2019, in international class 35;
- United States trademark registration No. 5769268 for ONLYFANS.COM (word mark), filed on October 29, 2018, and registered on June 4, 2019, in international class 35.
The disputed domain name was registered on March 25, 2021, and is pointed to a website providing information about the way to bypass ONLYFANS paywall and subscription, displaying the Complainant’s logo and providing also a link to the website “www.fifa21coingenerator.xyz/Coins”, purportedly offering free points for the football videogame FIFA 2021 after the completion of a survey.
5. Parties’ Contentions A. ComplainantThe Complainant contends that disputed domain name is confusingly similar to the trademark ONLYFANS in which the Complainant has rights as it reproduces the trademark in its entirety with the mere addition of the term “account” and the generic Top-Level Domain “.club”.
With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that the Respondent is in no way connected or affiliated with the Complainant and has never received any authorization, license, or consent, whether express or implied, to use the disputed domain name.
The Complainant contends that the Respondent is also not commonly known by the disputed domain name and that, given the Complainant’s world renown, it must had undoubtedly been aware of the Complainant when registering the disputed domain name, especially considering it included the Complainant’s logo on its website.
Moreover, the Complainant highlights that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services since it included a logo on its website, that is identical to the Complainant’s registered logo and has apparently attempted to create an impression of affiliation with the Complainant, whilst using the disputed domain name to offer illegal services.
In addition, the Complainant states that the Respondent cannot claim a right to use the disputed domain name under fair use, since it includes the trademark ONLYFANS and the additional term “account”, which creates a risk of implied affiliation.
With reference to the circumstances evidencing bad faith, the Complainant indicates that, considering its registration of the ONLYFANS trademark long predates the Respondent’s registration of the disputed domain name, that the disputed domain name is confusingly similar to the Complainant’s prior well-known trademark and that the Respondent published on its website a logo identical to that of the Complainant, the Respondent registered the disputed domain name to target the Complainant and its trademarks.
The Complainant underlines that the Respondent also clearly registered the disputed domain name to divert Internet traffic from the Complainant’s website to its own website using the Complainant’s logo and redirecting users to the website “www.fifa21coingenerator.xyz/Coins”.
Furthermore, the Complainant emphasizes that it sent the Respondent a cease-and-desist letter on May 17, 2021, demanding that the Respondent stop using and transfer the disputed domain name, but the Respondent failed to respond to the letter, which would be further evidence of bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsAccording to paragraph 15(a) of the Rules: “A Panel shall 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 directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe Panel finds that the Complainant has established rights over the trademark ONLYFANS based on the trademark registrations cited under section 4 above and the related trademark certificates submitted as annex E to the Complaint.
It is well accepted that the first element functions primarily as a standing requirement, and that the threshold test for confusing similarity involves a reasoned but relatively straightforward comparison between a complainant’s trademark and the disputed domain names to assess whether the trademark is recognizable within the disputed domain name (section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Moreover, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element (section 1.8 of the WIPO Overview 3.0) and the applicable Top-Level Domain (“TLD”) in a domain name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (section 1.11.1 of the WIPO Overview 3.0).
In the case at hand, the Panel notes that the disputed domain name is confusingly similar to the trademark ONLYFANS as it reproduces the trademark in its entirety with the sole addition of the term “account” and the gTLD “.club”, which do not prevent a finding of confusing similarity.
Therefore, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsIt is well established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy is potentially onerous, since proving a negative can be difficult considering such information is often primarily within the knowledge or control of the Respondent.
Accordingly, in line with previous UDRP decisions, it is sufficient that the Complainant show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In the case at hand, by not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.
The Panel notes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks.
Moreover, there is no element from which the Panel could infer a Respondent’s right over the disputed domain name, or that the Respondent, whose name disclosed in the Registrar’s WhoIs records for the disputed domain name is Said Saad, might be commonly known by the disputed domain name.
The Panel finds that the Respondent’s use of the disputed domain name to resolve users to a website providing information about the way to bypass ONLYFANS paywall and subscription, using the Complainant’s logo, and redirecting users to another website allegedly providing free points for the FIFA2021 football videogame upon completion of a survey, does not amount to bona fide offering of goods or services or a legitimate noncommercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark.
Moreover, as highlighted in section 2.5.1 of the WIPO Overview 3.0, the Panel finds that the disputed domain name, combining the Complainant’s trademark with the term “account”, carries a risk of implied affiliation.
Furthermore, as held in section 2.13.1 of the WIPO Overview 3.0, “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent”.
Therefore, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the disputed domain name according to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithParagraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered and is being used by the Respondent in bad faith.
In the case at hand, the Panel notes that, in light of the prior registration and use of the trademark ONLYFANS in connection with the Complainant’s services, provided via the website at the domain name
The Panel also finds that, in view of the use of the disputed domain name to divert users to the website described above, featuring the Complainant’s logo and redirecting users to another website offering purported points for the FIFA2021 videogame for free after the completion of a survey, the Respondent intentionally attempted to attract Internet users to its website, for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its website, the website linked thereto and the services provided therein, according to paragraph 4(b)(iv) of the Policy.
Furthermore, in accordance with prior decisions, the Panel also finds that a failure to respond to a cease-and- desist letter can be evidence of bad faith. See i.e., Spyros Michopoulos S.A. v. John Tolias, ToJo Enterprises,WIPO Case No. D2008-1003, in which the Panel stated: “Any such bad faith is compounded when the Domain Name owner upon receipt of notice that the Domain Name is identical or confusingly similar to a registered trademark, refuses to respond. Such conduct is not consistent with what one reasonably would expect from a good faith registrant accused of cybersquatting.”
Therefore, the Panel finds that the Complainant has also proven that the Respondent registered and has been using the disputed domain name in bad faith according 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,
Luca Barbero
Sole Panelist
Date: September 14, 2021