The Complainant is Fenix International Limited c/o Walters Law Group, United States of America (“United States” or “US”).
The Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland / Dilshan Omantha, Sri Lanka.
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 15, 2021. On August 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On August 16, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 18, 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 amended Complaint on August 18, 2021.
The Center verified that the Complaint together with the amended 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 September 1, 2021. In accordance with the Rules,
paragraph 5, the due date for Response was September 21, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 18, 2021.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on October 25, 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 located at the domain name
The Complainant has registered rights in the trademarks “ONLYFANS” and “ONLYFANS.COM” in the United States, the European Union (“EU”), and the United Kingdom. The earliest trademarks provided in evidence are the EU Trade Mark Registration No.017912377 with an effective registration date of January 9, 2019, and US Trademark Registration No. 5769267, registered on June 4, 2019, with first use date of July 4, 2016.
The Domain Names
The Domain Names are used to host websites featuring adult content taken from the users of the Complainant’s website.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the Domain Names are identical or confusingly similar to the trademark, the Respondent have no rights or legitimate interests with respect to the Domain Names, and that the Domain Names were registered and are being used in bad faith.
The Complainant requested the consolidation of the Domain Names since they are under the same common control.
The Complainant request the cancellation of the Domain Names.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements:
(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.
A. Identical or Confusingly SimilarThe Panel finds that the Complainant has established rights over the trademark ONLYFANS based on the trademark registrations mentioned in the Complaint and the trademark certificates submitted as annex E to the Complaint.
The threshold test for confusingly similarity involves the comparison between the trademark and the domain name itself such that the trademark would generally be recognizable within the domain name. The Panel understand that the disputed domain names
The disputed domain names
The disputed domain name
For the reasons above, the Panel finds that the Domain Names are confusingly similar to the trademark in which the Complainant has rights.
B. Rights or Legitimate InterestsPursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trade mark 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.
The Complainant contends that it is not affiliated with the Respondent and has not licensed or otherwise authorized the Respondent to use the trademark or register the Domain Names. It would not appear that the Respondent is commonly known by the Domain Names. The Respondent’s unauthorized use of the trademark in the Domain Names in relation to adult entertainment content including such content pirated from the Complainant’s website in direct competition with the Complainant’s services is not bona fide or legitimate noncommercial or fair use of the Domain Names.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Names.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration or use of a domain name in bad faith. The fourth circumstance is as follows:
“(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site 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 [the respondent’s] web site or location.”
The Panel is satisfied that the Respondent must have been aware of the trademark when it registered the Domain Names particularly since the websites hosted at the Domain Names contain content pirated from the Complainant’s users and the descriptive words in the Domain Names show a clear targeting and reference to the Complainant.
The Panel further notes that the same Respondent Dilshan Omantha was also the registrant of other domain names containing the trademark ONLYFANS in three WIPO cases. In all three cases, it was held that Respondent acted in bad faith in registering those domain names. See, Fenix International Limited v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / dilshan omantha,WIPO Case No. D2021-2489; Fenix International Limited c/o Walters Law Group v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / OnlyFan Free, and Dilshan Omantha, and Whois Privacy, Private by Design, LLC / Anaïs Busson,WIPO Case No. D2021-1686; and, Fenix International Limited c/o Walters Law Group v. Dilshan Omantha,WIPO Case No. DCC2021-0002.
It is implausible based on the record as set out above that the Respondent was unaware of the Complainant when it registered the Domain Names.
The Domain Names are also used in bad faith. The Websites offer content that include adult content taken from the users of the Complainant’s website. These Websites have been set up for the commercial benefit of the Respondent. It is highly likely that Internet users when typing the Domain Names into their browser or finding them through a search engine would have been looking for a site operated by the Complainant rather than the Respondent.
The Domain Names are likely to confuse Internet users trying to find the Complainant’s official website. Such confusion will inevitably result due to the incorporation of the trademark as the most prominent element of the Domain Names.
Therefore, the Panel finds that the Domain Names have been registered and are being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 Domain Names
Pablo A. Palazzi
Sole Panelist
Date: November 8, 2021