Complainant is Fenix International Limited c/o Walters Law Group, United States of America.
Respondent is Registration Private/Ashwani Verma, India.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2021. On August 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 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 Complainant on August 23, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on September 6, 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 Respondent of the Complaint, and the proceedings commenced on September 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 28, 2021. Respondent sent an informal email to the Center on September 8, 2021.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on October 5, 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 BackgroundComplainant is Fenix International Limited, a company which operates a social media network named ONLYFANS, through which users can interact with each other as they share and subscribe to audiovisual content for adults. Complainant’s services can be accessed worldwide through the Internet, specifically through Complainant’s official website “www.onlyfans.com” which achieved the title of 379th most popular website on the World Wide Web, according to Alexa Internet, and 213th most accessed website in the United States of America.
Aiming to protect its trademark rights over the world, Complainant owns a wide international portfolio of registered trademarks containing the sign ONLYFANS in a variety of jurisdictions, including the European Union, the United Kingdom and the United States of America.
Below are some examples of Complainant’s trademark registrations:
Registration No.
Trademark
Territory
International Classes
Date of Registration
EU017946559
European Union
9, 35, 38, 41, 42
09.01.2019
EU017912377
ONLYFANS
European Union
9, 35, 38, 41, 42
09.01.2019
5,769,267
ONLYFANS
United States of America
35
04.06.2019
5,769,268
ONLYFANS.COM
United States of America
35
04.06.2019
Moreover, it is important to highlight that Complainant’s official domain name
At last, it is important to note that the disputed domain name resolves to a website which imitates the content of Complainant’s website, providing several pieces of audiovisual content for mature audience.
5. Parties’ Contentions A. ComplainantComplainant submits that the disputed domain name
Therefore, the disputed domain name would be clearly intended to imitate Complainant’s business and take advantage of its well-known reputation, fulfilling paragraph 4(a)(i) of the Policy and paragraph 3(b)(viii), (b)(ix)(1) of the Rules.
Furthermore, Complainant affirms that Respondent does not have any rights or legitimate interests in respect of the trademark ONLYFANS, nor is it widely known by the disputed domain name, authorised or licensed to use such trademark as a domain name.
Complainant notes that its global fame and success makes it clear that Respondent was well aware of the existence of Complainant’s rights to the trademark ONLYFANS and, in consequence, Respondent knew that it had no rights or legitimate interests in the disputed domain name. Thus, according to Complainant, Respondent’s interest on the use of the trademark ONLYFANS would not be legitimate.
In addition, Complainant alleges that it has submitted a prima facie case to prove that Respondent does not have any rights or legitimate interest over the disputed domain name, so that burden of proof shifts to Respondent, who must rebut Complainant’s prima facie showing. In case Respondent fails in submitting a due response, Complainant believes that it must lead to a presumption that Respondent is unable to prove the existence of such right or interest.
Therefore, in this case, paragraph 4(a)(ii) of the Policy and paragraph 3(b)(ix)(2) of the Rules would be fulfilled.
At last, Complainant states that the disputed domain name
Complainant affirms that it is very likely that Respondent was well aware of its rights over the trademark ONLYFANS when registering the disputed domain name, given that (i) just like Complainant’s official website, the website hosted by the disputed domain name purports to offer adult entertainment content, including contents copied from Complainant’s platform; and that (ii) the disputed domain name was registered on March 30, 2021, long after Complainant had duly registered the sign ONLYFANS and had acquired clear distinctiveness for its trademark over the world.
Furthermore, Complainant alleges that it has sent a cease-and-desist letter to Respondent on June 24, 2021, requesting Respondent to stop using and transfer the disputed domain name to Complainant. However, Respondent has never submitted a reply to such letter, which would be a further evidence of bad faith.
Therefore, according to Complainant, the fact that Respondent registered the disputed domain name fully incorporating Complainant’s well-know trademark ONLYFANS, when already aware of Complainant's rights to such sign, to offer services that directly compete with those offered by Complainant, demonstrates that Respondent registered the disputed domain name in bad faith, so that paragraph 4(a)(iii) and 4(b) of the Policy and paragraph (b)(ix)(3) of the Rules would also be fulfilled.
B. RespondentOn September 16, 2021, Respondent submitted an informal e-mail to the Center with the following content: “Hello. I am willing to transfer the domain to complainant. Please let me know how to proceed.”
However, as Complainant did not submit a request for suspension of the proceeding in order to explore settlement options together with Respondent, the Center proceeded and appointed this Panel to hand a decision on the case.
6. Discussion and FindingsTo succeed in a UDRP complaint, Complainant must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied, as following:
(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.
The burden of proving these elements is upon Complainant.
Respondent had 20 days to submit a formal response in accordance with paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules establishes that if a respondent does not duly respond to the Complaint, the Panel’s decision shall be based upon Complaint’s allegations.
A. Identical or Confusingly SimilarComplainant has duly proven that it owns prior trademark and common law rights over the sign ONLYFANS, which is registered in many jurisdictions, and that the disputed domain name
The Panel finds that “www.onlyfans.com” is a widely known platform and believes the disputed domain name
Accordingly, section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that “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. The nature of such additional term(s) may however bear on assessment of the second and third elements”.
Furthermore, Panel also refers to section 1.11 of the WIPO Overview 3.0., which stablishes that “the applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test”.
Thus, the Panel finds that the disputed domain name
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0 as follows: “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
In this case, noting the facts and contentions listed above, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests, so the burden of production shifts to Respondent. As Respondent has not duly replied to Complainant’s contentions, the Panel has considered Complainant’s unrebutted prima facie case to be sufficient to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name
Therefore, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)).
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy lists a number of circumstances that, without limitation, are deemed evidence of the registration and use of a domain name in bad faith.
Firstly, the Panel finds that Complainant succeed in demonstrating that Respondent was aware of Complainant’s rights to the trademark ONLYFANS at the time of registration of the disputed domain name
Furthermore, the Panel notes that the disputed domain name is being used by Respondent as a fraudulent mean to divert Complainant’s audience in its favor, given that it offers the same content as Complainant, namely, adult entertainment content, including pirated content posted by Complainant’s users in Complainant’s official website. Therefore, the Panel believes that Respondent intends to take advantage of Complainant’s commercial value and goodwill identified by its famous trademark ONLYFANS to deceive online users for its own gain, what represents a finding of bad faith.
At last, the Panel notes that Respondent’s lack of response to the cease-and-desist letter sent by Complainant on June 24, 2021, as well as the content of its response to the Complaint - by which Respondent affirmed its intention to transfer the domain name to Complainant - is further indication of registration and use of the disputed domain name in bad faith.
Given all the above-mentioned, the Panel concludes that the disputed domain name was registered and is being used in bad faith under the Policy. As such, the Panel finds that Complainant has satisfied 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
Gabriel F. Leonardos
Sole Panelist
Date: October 19, 2021