The Complainant is Fenix International Limited c/o Walters Law Group, United States of America (“United States” or “US”).
The Respondent is Whois Privacy, Private by Design, LLC, United States / Dat Nguyen, Viet Nam.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2021. On September 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 27, 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 September 28, 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 September 28, 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 October 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 21, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 23, 2021.
The Center appointed Flip Petillion as the sole panelist in this matter on November 1, 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 a social media platform and website linked to the domain name
The Complainant owns various trademark registrations corresponding to or including the word “onlyfans”, such as the following:
- ONLYFANS, European Union trademark registration No. 017912377 registered on January 9, 2019, in classes 9, 35, 38, 41, and 42;
- ONLYFANS.COM (word mark), US trademark registration No. 5,769,268 registered on June 4, 2019, in class 35;
The Disputed Domain Name was registered on April 20, 2021.
According to evidence provided by the Complainant, it appears that the Disputed Domain Name resolves to a website offering services similar to the Complainant’s services, including content which is indicated as “leaked” from the Complainant’s website.
The Complainant requests the cancellation of the Disputed Domain Name.
5. Parties’ Contentions A. ComplainantThe Complainant considers the Disputed Domain Name to be legally identical or at least confusingly similar to a trademark in which it claims to have rights.
The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent has not used the Disputed Domain Name in connection with a legitimate use. Also, according to the Complainant, the Respondent has not been commonly known by the Disputed Domain Name and is in no way affiliated with the Complainant.
Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. According to the Complainant, the Respondent registered the Disputed Domain Name with full knowledge of the reputation of the Complainant’s trademark and the use of the Disputed Domain Name is an intentional attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation, or endorsement of the Disputed Domain Name.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
The onus is on the Complainant to make out his case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to cancel the Disputed Domain Name. As the UDRP proceedings are administrative, the standard of proof is the balance of probabilities.
Thus, for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:
(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.
The Panel will therefore deal with each of these requirements.
A. Identical or Confusingly SimilarTo prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that there are trademarks in which it has rights. The Complainant’s ONLYFANS trademark has been registered and is being used in various countries in connection to the Complainant’s social media services.
The Disputed Domain Name incorporates the Complainant’s ONLYFANS and ONLYFANS.COM word marks in their entirety, simply adding the term “asian”. Where the relevant trademark is recognizable within the Disputed Domain Name, the addition of other terms would not prevent a finding of confusing similarity under the first element (see section 1.8 of the WIPO Overview 3.0).
It is well established that the generic Top-Level Domain (“gTLD”), here “.com”, may be disregarded when considering whether the Disputed Domain Name is confusingly similar to a trademark in which the Complainant has rights. However, in this case, the “.com” part of the Disputed Domain Name is relevant as it is included in the Complainants ONLYFANS.COM trademark.
In light of the above, the Panel considers the Disputed Domain Name to be confusingly similar to the Complainant’s ONLYFANS and ONLYFANS.COM trademarks.
B. Rights or Legitimate InterestsUnder paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
As established by previous UDRP panels, it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondent (see section 2.1 of the WIPO Overview 3.0).
The Panel notes that the Respondent has not apparently been commonly known by the Disputed Domain Name and that the Respondent does not seem to have acquired trademark or service mark rights. According to the information provided by the Registrar, the Respondent is “Dat Nguyen”. The Respondent’s use and registration of the Disputed Domain Name was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent exists or existed.
Where a domain name consists of a trademark plus an additional term, UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner (see section 2.5.1 of the WIPO Overview 3.0). The Disputed Domain Name incorporates the Complainant’s ONLYFANS trademark, which is well known amongst the relevant public (see below under section 6.C), and adds the word “asian”. This term is descriptive and could be considered to refer to some Asian version of the Complainant’s website. Therefore, the Panel finds that the Disputed Domain Name carries a risk of implied affiliation with the Complainant and cannot constitute fair use.
Beyond looking at the domain name and the nature of any additional terms appended to it, UDRP panels assess whether the overall facts and circumstances of the case, such as the content of the website linked to the disputed domain name and the absence of a response, support a fair use or not (see sections 2.5.2 and 2.5.3 of the WIPO Overview 3.0).
Based on the evidence provided by the Complainant, the Panel observes that the website to which the Disputed Domain Name resolves seems to offer services similar to the Complainant’s services, including content which is indicated as “leaked” from the Complainant’s website. The website linked to the Disputed Domain Name includes numerous direct references to the Complainant’s ONLYFANS mark. In the Panel’s view, this does not amount to a legitimate noncommercial or fair use of the Disputed Domain Name, as confirmed by many UDRP panels in similar cases involving the Complainant (see for example Fenix International Limited v. Datos privados,WIPO Case No. D2021-1306; Fenix International Limited v. Tony Lear, midieast corp.,WIPO Case No. D2021-1304.
The Respondent had the opportunity to demonstrate its rights or legitimate interests but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted.
Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In light of the above, the Complainant succeeds on the second element of the Policy.
C. Registered and Used in Bad FaithThe Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see section 4.2 of the WIPO Overview 3.0 and, for example, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, and Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052).
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use is the use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to a 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 website or location or of a product or service on the website or location.
In the present case, the Panel finds that it is inconceivable that the Respondent was unaware of the Complainant and its trademark rights when it registered the Disputed Domain Name.
The Complainant provides evidence of the acquired distinctiveness of its ONLYFANS mark, including through its website linked to the domain name
The Disputed Domain Name includes the Complainant’s ONLYFANS and ONLYFANS.COM trademarks in their entirety. The website linked to the Disputed Domain Name offers services similar to the Complainant’s services and numerous direct references to the Complainant’s ONLYFANS trademark. In the Panel’s view, the Respondent’s awareness of the Complainant’s trademark rights at the time of registration suggests bad faith (see Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz,WIPO Case No. D2011-2209; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of a telecommunications services suffix (“voip”) suggested knowledge of the complainant’s rights in the trademarks).
The Disputed Domain Name is used to redirect to a website offering services similar to the Complainant’s services, namely the provision of audio-visual content. Moreover, the Panel observes that according to the evidence provided by the Complainant, the content offered on the Respondent’s website is indicated as being “leaked” from the Complainant’s website. In the Panel’s view, this indicates that the Respondent intentionally attempts to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark.
By failing to respond to the Complaint, the Respondent did not take any initiative to contest the foregoing. Pursuant to paragraph 14 of the Rules, the Panel may draw the conclusions it considers appropriate.
Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith. In light of the above, the Complainant also succeeds on the third and last element 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
Flip Petillion
Sole Panelist
Date: November 15, 2021