The Complainant is Fenix International Limited, United States of America (“United States”), c/o Walters Law Group, United States of America.
The Respondent is Withheld For Privacy Purposes, Privacy service provided by Withheld for Privacy ehf/ Kazi Otr, Albania.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2021. On August 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 3, 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 August 4, 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 August 4, 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 August 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 25, 2021. The Respondent sent an informal email to the Center on August 5, 2021, but did not submit a Response.
The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on October 15, 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 the website to which the domain name
The Complainant is the owner of several trademark registrations around the world, among others, the following:
Trademark
No. Registration
Jurisdiction
Date of Registration
International Classes
ONLYFANS
EU017946559
European Union
January 9, 2019
9, 35, 38, 41, and 42
ONLYFANS
EU0917912377
European Union
January 9, 2019
9, 35, 38, 41, and 42
ONLYFANS
UK00917946559
United Kingdom
January 9, 2019
9, 35, 38, 41, and 42
ONLYFANS
UK00917912377
United Kingdom
January 9, 2019
9, 35, 38, 41, and 42
ONLYFANS
5769267
United States
June 4, 2019
35
ONLYFANS.COM
5769268
United States
June 4, 2019
35
The Respondent registered the disputed domain name on April 17, 2021, which resolves to an inactive website.
5. Parties’ Contentions A. ComplainantThe Complainant has requested, aware of the possible consequences, that the Administrative Panel appointed in this administrative proceeding order that the Disputed Domain Name be cancelled.
The Complainant argued the following:
That in 2021, the Complainant’s website to which the domain name
That, since the website to which the domain name
That the disputed domain name is identical or confusingly similar to the Complainant’s trademarks.
That the disputed domain name consists of the Complainant’s exact trademark ONLYFANS, with the insertion of the descriptive term “leaked” before said trademark, which does nothing to avoid confusing similarity.
That the use of the “.xyz” generic Top-Level Domain (“gTLD”) does not change the result in the confusing similarity analysis, since it does not sufficiently distinguish the disputed domain name from the Complainant’s trademarks.
II. Rights or Legitimate InterestsThat the Respondent has no connection to, or affiliation with the Complainant, and that the Respondent has not received any authorization, license, or consent, whether express or implied, to use the trademark in the disputed domain name, or in any other manner.
That the Respondent is not commonly known by the trademark ONLYFANS, and does not hold any trademark rights to the disputed domain name.
That the Complainant has achieved global fame and success in a short time, which makes it clear that the Respondent knew of the Complainant’s trademark and knew that he had no rights to, or legitimate interests in the disputed domain name.
That there is no evidence indicating that the Respondent is known by the text of the disputed domain name.
That once the Complainant asserts that the Respondent has no rights or legitimate interests, the burden of proof then shifts to the Respondent, to provide concrete evidence that it has rights to, or legitimate interest in the domain name at issue. That the Respondent will be unable to provide credible evidence that he has rights to, or legitimate interests in the disputed domain name.
That the registration and use of a domain name in bad faith cannot establish rights or legitimate interests in favor of the Respondent.
That the Respondent cannot claim a right to use the disputed domain name under fair use, since it includes the Complainant’s trademark and the additional term “leaked”, which creates a risk of implied affiliation.
That the website to which the disputed domain name resolves redirects to a Discord chatroom invitation. That once the invitation is accepted, users can request and view content pirated from the Complainant’s website users. That this activity is in direct competition with the Complainant’s services.
That using the disputed domain name to host commercial websites that advertise goods and services in direct competition with the Complainant does not constitute legitimate rights or interests.
That the Respondent registered and used the disputed domain name not because it refers to, or is associated with the Respondent, but because the disputed domain name is identical or confusingly similar to the
That the disputed domain name was registered on April 17, 2021, long after the Complainant secured registered rights in the trademark ONLYFANS, and long after the Complainant had acquired common law rights to said trademarks, which have acquired distinctiveness. That this acquired distinctiveness is so strong, that the Complainant’s website is among the Top 500 most popular websites in the world.
That previous panels have consistently found that the registration of a domain name that is confusingly similar to a widely-known trademark, creates a presumption of bad faith.
That, the Complainant’s trademark ONLYFANS has been recognized in numerous previous cases decided under the Policy as “internationally well-known amongst the relevant public”, such that the Respondent either knew or ought to have known of the Complainant’s trademark, and likely registered the disputed domain name to target said trademark.
That using the Complainant’s trademark in connection with the offering of illegal, pirated, or counterfeit content constitutes evidence of bad faith use and registration.
That, the Respondent registered the disputed domain name to offer services in direct competition with the Complainant (including content pirated from the Complainant’s users).
That the Complainant sent a cease-and-desist letter to the Respondent on June 11, 2021, demanding that the Respondent stop using and transfer the disputed domain name to the Complainant, but that the Respondent did not reply, which is further evidence of bad faith.
That the Respondent hid from the public behind a WhoIs privacy wall, which is additional evidence of bad faith registration.
That the Respondent registered the disputed domain name to divert Internet traffic from the Complainant’s website to a website offering adult entertainment content (including content pirated from the Complainant’s users), in direct competition with the Complainant’s website.
b) Used in Bad FaithThat use in bad faith is found where a disputed domain name directs users to a commercial website that offers goods and services in direct competition with the trademark owner.
B. RespondentThe Respondent sent an informal communication to the Center on July 22, 2021, asking whether changing the name of the disputed domain name would be a solution, or whether the Respondent had to delete it.
6. Discussion and FindingsIn accordance with paragraph 4(a) of the Policy, the Complainant is required to prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants 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 was registered and is being used in bad faith.
Given the Respondent’s failure to submit a formal Response, the Panel may decide this proceeding based on the Complainant’s undisputed factual allegations under paragraphs 5(f), 14(a), and 15(a) of the Rules, (see Joseph Phelps Vineyards LLC c. NOLDC, Inc., Alternative Identity, Inc., and Kentech,
WIPO Case No. D2006-0292).
The Complainant has filed evidence showing that it owns registrations for the trademark ONLYFANS, in the United States, the European Union, and the United Kingdom, and that it holds common law rights arising from the use of said trademark.
The disputed domain name is confusingly similar to the Complainant’s trademark ONLYFANS, as it incorporates said trademark entirely, with the addition of the term “leaked”. Previous panels appointed under the Policy have found that the addition of a descriptive term to a disputed domain name, such as “leaked”, does not avoid a finding of confusing similarity (see sections 1.7, 1.8, and 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), see also Fenix International Limited v. Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf / Marius Pop,
WIPO Case No. D2021-2715; Fenix International Limited c/o Walters Law Group v. Marius,
WIPO Case No. D2021-1340, and Fenix International Limited c/o Walters Law Group v. Dilshan Omantha,
WIPO Case No. DCC2021-0002).
The addition of the gTLD “.xyz” to the disputed domain name constitutes a technical requirement of the Domain Name System (“DNS”). Therefore, it has no legal significance in the analysis of confusing similarity in the present case (see CARACOLITO S SAS v. Nelson Brown, OXM.CO,
WIPO Case No. D2020-0268; SAP SE v. Mohammed Aziz Sheikh, Sapteq Global Consulting Services,
WIPO Case No. D2015-0565; and Bentley Motors Limited v. Domain Admin / Kyle Rocheleau, Privacy Hero Inc.,
WIPO Case No. D2014-1919).
In light of the above, the first element of the Policy has been met.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in the disputed domain name:
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the disputed 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 (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if it did not acquire trademark 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 or to tarnish the trademark or service mark at issue.
The Complainant has asserted that there is no relationship between the Complainant and the Respondent, that it has not granted any authorization, license, or consent to the Respondent to use its trademark ONLYFANS in the disputed domain name, and that the Respondent has not been commonly known by the disputed domain name (see Beyoncé Knowles v. Sonny Ahuja,
WIPO Case No. D2010-1431; and Six Continents Hotels, Inc. v. IQ Management Corporation,
WIPO Case No. D2004-0272). The Respondent did not contest these allegations.
The Panel agrees with previous panels appointed under the Policy, in that the ONLYFANS trademark is well-known (see Fenix International Limited c/o Walters Law Group v. Andrei Ivanov,
WIPO Case No. D2021‑1284; Fenix International Limited c/o Walters Law Group v. Marius,
WIPO Case No. D2021-1340; Fenix International Limited c/o Walters Law Group v. Dilshan Omantha,
WIPO Case No. DCC2021-0002; Fenix International Limited v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Bent Harracksingh,
WIPO Case No. D2021-1337; Fenix International Limited v. Datos privados,
WIPO Case No. D2021-1306; Fenix International Limited v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Andrei Ivanov,
WIPO Case No. D2021-1339; Fenix International Limited v. Kiril Kirilov,
WIPO Case No. D2021-0853; Fenix International Limited c/o Walters Law Group v. Juan Anton, Onlyfanx,
WIPO Case No. D2021-0837; Fenix International Limited v. WhoisGuard Protected, WhoisGuard Inc. / Genadiy Ivanov,
WIPO Case No. D2021-0828; Fenix International Limited v. WhoisGuard Protected, WhoisGuard Inc. / kadene wignall,
WIPO Case No. D2021‑0825; Fenix International Limited c/o Walters Law Group v. Danesco Trading Ltd. / AVO Ltd AVO Ltd,
WIPO Case No. D2021-0863; Fenix International Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Yazid Laiss / Stive Belb / Ahmed Bel Bouahli,
WIPO Case No. D2021-0152; Fenix International Limited c/o Walters Law Group v. WhoisGuard, Inc., WhoisGuard Protected / Marry Mae Cerna,
WIPO Case No. D2021‑0327; Fenix International Limited v. Domains By Proxy, LLC. / Carolina Rodrigues, Fundacion Comercio Electronico,
WIPO Case No. D2020-3447; Fenix International Limited v. Tuncay Karatas, Skalonga Event,
WIPO Case No. D2021-0132, and Fenix International Limited v. Perfect Privacy, LLC/ Chad Moston, Speedplexer,
WIPO Case No. D2020-1162).
The disputed domain name entirely reproduces the Complainant’s trademark ONLYFANS, and adds the term “leaked”, which shows that the Respondent has targeted the Complainant to promote illegitimate activity. Therefore, the Respondent’s conduct cannot be considered as a legitimate noncommercial or fair use of the disputed domain name (see section 2.5.2 of the WIPO Overview 3.0).
The inclusion, in the website to which the disputed domain name resolves, of illegally reproduced content taken from the Complainant’s website, cannot be deemed as a bona fide offering of goods and services (see Fenix International Limited v. Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf / Marius Pop,
WIPO Case No. D2021-2715, see also section 2.13 of the WIPO Overview 3.0).
The consensus view among panels appointed under the Policy is that the use of a domain name for illegal activity, such as the misappropriation of copyrighted material, cannot confer rights to, or legitimate interests in a domain name (see section 2.13 of the WIPO Overview 3.0; see also Self-Portrait IP Limited v. Franklin Kelly,
WIPO Case No. D2019-0283).
In light of the above, the Complainant made a prima facie case that the Respondent lacks rights to or legitimate interests in the disputed domain name. The Respondent did not submit any evidence or arguments to challenge the Complainant’s assertions.
Therefore, the second element of the Policy has been fulfilled.
C. Registered and Used in Bad FaithAccording to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the respondent has registered or the respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the 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 the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s web site or location or of a product or service on its web site or location.
The fact that the Respondent registered the disputed domain name which entirely reproduces the Complainant’s well-known trademark ONLYFANS, alongside the term “leaked”, shows that the Respondent has targeted the Complainant, which constitutes opportunistic bad faith (see section 3.2.1 of the WIPO Overview 3.0; see also L’Oréal v. Contact Privacy Inc. Customer 0149511181 / Jerry Peter,
WIPO Case No. D2018-1937; Gilead Sciences Ireland UC / Gilead Sciences, Inc. v. Domain Maybe For Sale c/o Dynadot,
WIPO Case No. D2019-0980; Dream Marriage Group, Inc. v. Romantic Lines LP, Vadim Parhomchuk,
WIPO Case No. D2020-1344; and Valentino S.p.A. v. Qiu Yufeng, Li Lianye,
WIPO Case No. D2016-1747).
Previous panels appointed under the Policy have found that the mere registration by an unauthorized party of a domain name that is identical to a well-known trademark, can in certain circumstances constitute bad faith in itself (see section 3.1.4 of the WIPO Overview 3.0, see also Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation; Toyota Motor Sales, U.S.A., Inc., and Toyota Motor Sales De Mexico, S. De R.L. de C.V. v. Salvador Cobian,
WIPO Case No. DMX2001-0006,and Ferrari S.p.A. v. Ms. Lee Joohee (or Joo-Hee),
WIPO Case No. D2003-0882).
Moreover, the disputed domain name redirected to a “Discord” chatroom invitation, which, after being accepted by a user, would allow said user to request and view content reproduced from that of the Complainant’s users. Therefore, this Panel considers that the Respondent is trying to capitalize on the reputation and goodwill of the Complainant’s trademark by misleading Internet users, for commercial gain, to the disputed domain names, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain names, which constitutes bad faith under paragraph 4(b)(iv) of the Policy (see section 3.1.4 of the Policy, see also Fontem Holdings 4, B.V. v. J- B-, Limestar Inc.,
WIPO Case No. D2016-0344; Archer-Daniels-Midland Company v. Wang De Bing,
WIPO Case No. D2017-0363, and Merck Sharp & Dohme Corp. v. Domain Administrator, PrivacyGuardian.org / George Ring, DN Capital Inc.,
WIPO Case No. D2017-0302).
Taking these facts into consideration, the third element of the Policy has been met.
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,
Kiyoshi Tsuru
Sole Panelist
Date: October 29, 2021