The Complainant is Fenix International Limited c/o Walters Law Group, United States of America.
The Respondent is Host Master, 1337 Services LLC, Saint Kitts and Nevis.
2. The Domain Name and RegistrarThe Disputed Domain Name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 13, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. Also on the same day, 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 17, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same date, the Complainant filed an amendment to the Complaint.
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 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 9, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 15, 2021.
The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on October 4, 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 operates subscription-based audio-visual social media platform known as OnlyFans at “www.onlyfans.com” (the “Complainant’s website”). This was launched in November 2016 and has grown very quickly. Previous UDRP panels have noted that more than 150 million registered users visit the site, generating in excess of USD 5 billion in annual revenues for 1.5 million largely uncensored content creators including celebrities, sex workers, musicians, physical fitness trainers, and others (see Fenix International Limited v. Dontrell Mcfarland,WIPO Case No. D2021-2232). The Complaint attaches Alexa Internet statistics from May 20, 2021 showing that the Complainant’s website ranked 379 for global Internet engagement.
The Complainant states the rapid growth of its business since 2016 and the international recognition of its ONLYFANS mark associated with its website and platform services mean it has common law rights dating back to 2016. The Complainant also has registered trademarks, including the following:
MARK JURISDICTION NUMBER REGISTRATION DATEONLYFANS (word mark)
European Union
017912377
January 9, 2019
ONLYFANS (words and design)
European Union
017945559
January 9, 2019
ONLYFANS (word mark)
United Kingdom
UK00917912377
January 9, 2019
ONLYFANS (words and design)
United Kingdom
UK00917946559
January 9, 2019
ONLYFANS.COM (standard characters)
United States of America
5769268
June 4, 2019
ONLYFANS (standard characters)
United States of America
5769267
June 4, 2019
ONLYFANS (words and design)
United States of America
6253475
January 26, 2021
ONLYFANS (standard characters)
United States of America
6253455
January 26, 2021
ONLYFANS (words and design)
International Trademark
1509110
November 2, 2019
These will be collectively referred to as the “ONLYFANS Mark”.
The Complainant’s services include “providing entertainment services ... in the nature of a website featuring non-downloadable video, photographs, images, audio, and ... in the field of adult entertainment.”
The respondent registered the Disputed Domain Name
The Complainant has provided evidence dated June 10, 2021 showing the Disputed Domain Name resolves to a website titled “OnlyFansLeaked” which depicts video content which the Complainant states has been pirated from the Complainant’s website without permission.
5. Parties’ Contentions A. ComplainantThe Complainant asserts it has rights in the ONLYFANS Mark. The Complainant contends that the Disputed Domain Name is confusingly similar to its ONLYFANS Mark. It states that, despite the addition of the term “leaked”, its ONLYFANS Mark remains prominent and recognizable in the Disputed Domain Name.
The Complainant also asserts that the Respondent has no rights in or to the Disputed Domain Name. In this respect, the Complainant states that the Respondent is not affiliated or connected with it in any way and is not licensed by it or otherwise authorized to use the ONLYFANS name and Mark.
The Complainant also contends that the Respondent has no legitimate interests in respect of the Disputed Domain Name. The Complainant states that the Respondent is not commonly known by the Disputed Domain Name and has not acquired any registered trademark rights or unregistered rights in the ONLYFANS Mark or name. The Complainant contends that the Respondent’s use of the Disputed Domain Name is to create an impression of association with the Complainant. The Complainant also states that it sent a cease and desist letter to the Respondent seeking voluntary transfer of the Disputed Domain Name but that the Respondent never responded to this communication.
Finally, the Complainant contends that the Disputed Domain Name was registered and is being used in bad faith and that this is evidenced by the nature of the Disputed Domain Name and the fact that the Disputed Domain Name resolves to a website which displays pirated videos in direct competition with the Complainant’s services.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsPursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the Disputed Domain Name in order to succeed in this proceeding:
(i) that the Disputed Domain Name is identical or confusingly similar to a trademark 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 Complainant has provided evidence of its registrations of the ONLYFANS Mark in the United States, the European Union, and the United Kingdom. The Panel is satisfied that the Complainant is well-known by its ONLYFANS Mark as an online provider of subscription-based audio-visual content. The Complainant’s trademark rights have been recognized in over forty other WIPO UDRP decisions. Further, the Complainant’s common law rights have been recognized by an earlier UDRP panel as having acquired distinctiveness by at least May 30, 2017 (see Fenix International Limited v. c/o who is privacy.com / Tulip Trading Company, Tulip Trading Company Limited,WIPO Case No. DCO2020-0038. Accordingly, it is the Panel’s view that the Complainant has clearly and sufficiently demonstrated its rights in the ONLYFANS Mark at the time the Disputed Domain Name was registered in April 2021.The Panel finds that the Disputed Domain Name contains, as a dominant element, the ONLYFANS Mark combined with the term “leaked”. The Panel considers that the addition of the term “leaked” does not prevent a finding of confusing similarity (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, “WIPO Overview 3.0”).
The Panel also notes that it is well-established that the addition of the generic Top-Level Domain (“gTLD”) “.com” may be disregarded for the purposes of comparisons under the first element.
The Panel therefore finds that the Disputed Domain Name is confusingly similar to the Complainant’s ONLYFANS Mark.
Therefore, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.
B. Rights or Legitimate InterestsPursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the Disputed Domain Name, among other circumstances, by showing any one of the following elements:
(i) that before notice of the dispute, the Respondent used or made demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the Disputed Domain Name, even if it had acquired no trademark or service rights; or
(iii) that the Respondent is making a legitimate non-commercial 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.
The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name lies with the Complainant.
According to WIPO Overview 3.0 section 2.5.1, a disputed domain name comprising the complainant’s trademark and certain additional terms cannot constitute fair use, when doing so effectively impersonates or suggests sponsorship or endorsement by a complainant.
The Complainant has stated, and the Panel accepts, that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In this respect, the Panel accepts that the Respondent is not commonly known by the Disputed Domain Name and has not acquired any rights (registered or otherwise) in the ONLYFANS Mark or name.
The Panel finds that the Complainant has satisfied the burden of establishing a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and accordingly finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.
The Panel is also entitled to have regard to the lack of any substantive response on this point from the Respondent and the absence of any claim to rights or legitimate interests in the Disputed Domain Name.
Therefore, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.
C. Registered and Used in Bad FaithThe Panel is satisfied that the Disputed Domain Name has been registered in bad faith for the following reasons:
(i) The Panel is satisfied that the Complainant’s ONLYFANS Mark is internationally well-known amongst the relevant public with a history of use going back to 2016. The Panel is also satisfied that at the time of registering the Disputed Domain Name, the Respondent was aware of the Complainant, its ONLYFANS Mark, the Complainant’s exclusive rights in that Mark, and the goodwill residing in the Mark.
(ii) The Panel notes that the use of the term “leaked” deliberately draws attention to the primary and dominant element of the Disputed Domain Name, namely the ONLYFANS Mark, which is used in its entirety. The addition of the term leaked affirms that the Respondent had the Complainant in mind when registered the Disputed Domain Name and suggests access (likely illegal) to Complainant’s services.
(iii) The Complainant has stated, and the Panel finds, that the Respondent registered the Disputed Domain Name with the intention of diverting Internet traffic from the Complainant’s website to a website offering adult entertainment content, including content pirated from Complainant’s users, in direct competition with Complainant’s website.
(iv) Without any rights or legitimate interests, the Respondent’s registration of the Disputed Domain Name is itself indicative of bad faith.
The Panel is also satisfied that the Disputed Domain Name has been used in bad faith for the following reasons:
(i) The Complainant has provided evidence that the website to which the Disputed Domain Name resolves offers adult entertainment services (including content pirated from Complainant’s users) in direct competition with Complainant’s services which include “providing entertainment services ... in the nature of a website featuring non-downloadable video, photographs, images, audio, and ... in the field of adult entertainment.”
(ii) It can be presumed that the website at the Disputed Domain Name indeed contains content pirated from the Complainant’s website. This means content previously published at the Complainant’s website is offered free of charge by the Respondent, without remunerating the Complainant or the respective creators. Using a complainant’s mark in connection with the offering of illegal, pirated, or counterfeit content constitutes evidence of bad faith use and registration.
(iii) The Panel is entitled to have regard to the lack of any substantive response on this point from the Respondent.
(iv) The Panel considers that the Respondent, by using the Disputed Domain Name, has intentionally attempted to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s Mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website. This is a circumstance of registration and use in bad faith pursuant to Policy paragraph 4(b)(iv).
(v) The Respondent’s failure to reply to the cease and desist letter sent by the Complainant is further evidence of continued use in bad faith, given all the other circumstances of this case. See LEGO Juris A/S v Thai Dang,WIPO Case No. D2018-1929.
Therefore, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied in favor of the Complainant.
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
Andrew Brown Q.C.
Sole Panelist
Date: October 18, 2021