Complainant is Fenix International Limited c/o Walters Law Group, United States of America (“United States” or “U.S.”).
Respondent is Oliva Alan, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 19, 2021. On August 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 20, 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 30, 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 8, 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 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 30, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 12, 2021.
The Center appointed Scott R. Austin as the sole panelist in this matter on November 29, 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 states in its Complaint and provides evidence in the respective Annexes sufficient to support that Complainant, through a domain name it registered in 2013,
An Alexa Internet Summary captured on May 20, 2021, shows that the ONLYFANS Official Website is the 379th most popular website on the World Wide Web, and it is the 213th most popular website in the United States.
Through the use of its ONLYFANS Mark, Complainant has established trademark rights both at common law and through registrations in the European Union, the United Kingdom, and the United States, including United States Trademark Registration No. 5,769,267, ONLYFANS, registered on June 4, 2019, for “Arranging subscriptions of the online publications of others”, and claiming a first use date of July 4, 2016; United States Trademark Registration No. 5,769,268, ONLYFANS.COM, registered on June 4, 2019, for “Arranging subscriptions of the online publications of others”, and claiming a first use date of July 4, 2016. Complainant’s unregistered common law trademark rights have also been recognized in a number of prior UDRP panel decisions, including one finding that the ONLYFANS Mark had accrued and acquired distinctiveness by no later than May 30, 2017.
The disputed domain name was registered on April 14, 2021, and resolves to a website that offers adult entertainment services (including content pirated from Complainant’s users) in direct competition with Complainant’s services.
5. Parties’ Contentions A. ComplainantComplainant contends that the disputed domain name is identical or confusingly similar to Complainant’s trademark; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and FindingsTo succeed, Complainant must demonstrate that all elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (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 standard of proof under the Policy is often expressed as the “balance of probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.2.
A. Identical or Confusingly SimilarOwnership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has demonstrated its rights because it has shown that it is the holder of a valid and subsisting trademark registration for the ONLYFANS Mark. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen,WIPO Case No. D2014-0657.
Prior UDRP panels have held “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”. See WIPO Overview 3.0, section 1.7. The Panel finds here that the disputed domain name wholly incorporates Complainant’s registered ONLYFANS Mark. Furthermore, adding of the term “mr” before Complainant’s Mark and the term “leaks” after it, does not prevent a finding of confusing similarity. See WIPO Overview 3.0, section 1.8.
Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsUnder the second element of the Policy, a complainant is first required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If the complainant makes that showing, the burden of production on this element shifts to the respondent to come forward with relevant evidence of such rights or legitimate interests in the domain name. If the respondent fails to come forward with such evidence, the complainant is generally deemed to have satisfied the second element. See WIPO Overview 3.0, section 2.1. See also, Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393.
Complainant has established, prima facie, that Respondent lacks rights or legitimate interests in the disputed domain name. First, Complainant asserts it has never authorized, licensed, or otherwise consented for Respondent to use the ONLYFANS Mark in any manner, nor was there ever any connection, or affiliation between Complainant and Respondent.
Complainant has also claimed with persuasive evidence submitted that Respondent is not commonly known by the disputed domain name. The original Respondent listed in the WhoIs record submitted with the initial Complaint was “Redacted, Redacted for privacy”. Later, when the Registrar disclosed the underlying registrant, “Oliva Alan”, Complainant submitted its amendment to the Complaint to include this registrant as Respondent. Prior UDRP panels have found that a respondent is not commonly known by the disputed domain name based on the WhoIs information and the evidence in the record. LK International AG v. Fundacion Private Whois,WIPO Case No. D2013-0135. In this proceeding, neither the original nor the disclosed Respondent name bears any resemblance to the disputed domain name. Based on these facts, combined with the lack of evidence in the record to suggest otherwise, this Panel finds that Respondent is not commonly known by the disputed domain name or any variation thereof pursuant to Policy paragraph 4(c)(ii).
It is generally regarded as prima facie evidence of no rights or legitimate interests if a complainant shows that the disputed domain name is identical or confusingly similar to the complainant’s trademark, that the respondent is not commonly known by the disputed domain name, and that the complainant has not authorized the respondent to use its mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. See, Roust Trading Limited v. AMG LLC,WIPO Case No. D2007-1857.
Most importantly, Complainant’s evidence shows the disputed domain name resolves to Respondent’s counterfeit website that is in competition with Complainant’s services and contains content pirated from Complainant’s ONLYFANS Official Website. Prior UDRP panels have held that using a disputed domain name to host commercial websites that advertise goods and services in direct competition with the trademark owner does not give rise to legitimate rights or interests. See Fenix International Limited v. Danesco Trading Ltd. / Mikasantik Dikalov,WIPO Case No. D2021-0593. The Panel finds Respondent has no rights to or legitimate interests in the disputed domain name. See, Valero Energy Corporation and Valero Marketing and Supply Company v. Valero Energy,WIPO Case No. D2017-0075.
These facts establish Complainant’s prima facie showing. Respondent has not provided any basis on which that showing may be overcome. In addition, the Panel notes that the composition of the disputed domain name carries a risk of implied affiliation with Complainant. WIPO Overview 3.0, section 2.5.1.
Complainant has successfully met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithRespondent clearly registered the disputed domain name to divert Internet users from Complainant’s website to the website to which the disputed domain name resolves, offering adult entertainment content (including content pirated from Complainant’s users) in direct competition with Complainant’s website. It is implausible, therefore, to believe that Respondent was not aware of the ONLYFANS mark when it registered its confusingly similar disputed domain name to access a counterfeit website, but, as Complainant contends, shows Respondent’s clear intention to target the ONLYFANS Mark through the registration of the disputed domain name. In the circumstances of this case, where Respondent registered the disputed domain name to blatantly engage in per se illegitimate activity for its commercial gain, with actual knowledge demonstrated through configuration of a disputed domain name targeting Complainant’s registered mark, such a showing is sufficient to establish bad faith registration. See, WIPO Overview 3.0, section 3.1.4; see also Fenix International Limited c/o Walters Law Group v. Juan Anton, Onlyfanx, WIPO Case No. D2021-0837.
Bad faith use is clear from Respondent’s stridently copycat website accessed through the disputed domain name, created for the purposes of perpetrating fraud to attract Internet users to visit Respondent’s website for its commercial gain in violation of the Policy, to purchase pirated content by suggesting an affiliation with Complainant as discussed in detail above. Given the substantial evidence in the record that shows use of the disputed domain name to commit fraud against Complainant by using the ONLYFANS Mark offering content competing with Complainant’s adult entertainment content (including content pirated from Complainant’s users) the Panel finds bad faith registration and use. See, Valero Energy, supra; Rockstar Games v. Texas International Property Associates,WIPO Case No. D2007-0501.
For these reasons, the Panel finds that Complainant has met its burden under 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,
Scott R. Austin
Sole Panelist
Date: December 22, 2021