The Complainant is Fenix International Limited c/o Walters Law Group, United States of America (“United States”).
The Respondent is Super Privacy Service LTD, United States / Jamiur Bin Nasir, Bangladesh.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 6, 2021. On October 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 8, 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 October 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 amendment to the Complaint on October 18, 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 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 15, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 16, 2021.
The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on December 6, 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 the website “www.onlyfans.com”, a social media platform that allows users to post and/or subscribe to audiovisual content. According to Alexa Internet Complainant´s website is listed in 2021 as the 379th most popular website worldwide.
The Complainant holds trademark registration for ONLYFANS in different jurisdictions. As such:
EUIPO1 Trademark registration No. 017912377 registered on January 9, 2019, in classes 9, 35, 38, 41, and 42.
USPTO2 Trademark registration No.5769267 registered on June 4, 2019, in class 35.
Previous UDRP panels decisions have recognized Complainant’s unregistered common law rights. See Fenix International Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Samuel Walton,
WIPO Case No. D2020-3131.
Likewise, previous UDRP panels decisions have recognized that ONLYFANS is a well-known trademark for the purposes of the UDRP. See Fenix International Limited v. Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf / Eduardo Guerrero Romero,
WIPO Case No. D2021-3180.
The disputed domain name was registered on May 2, 2021, and directs to a website hosting adult content.
The Complainant sent a cease-and-desist letter to the Respondent on August 12, 2021, and Respondent did not reply.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the disputed domain name is identical or confusingly similar to its trademark. Then, highlights the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition section 1.8, “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”. Moreover, the Complainant denies that the use of the <.top> (generic Top-Level Domain (“gTLD”)) change the result of identity or confusingly similarity.
Further, the Complainant asserts that the Respondent has no connection or affiliation with the Complainant and that the Respondent has not received any authorization, license, or consent, whether express or implied, to use the marks in the disputed domain name or in any other manner. Besides, the Respondent is not commonly known by ONLYFANS and does not hold any trademarks for the disputed domain name. The Complainant concludes that all the evidence shows that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant alleges that the Respondent’s website offers services in the field of the adult entertainment in direct competition with the Complainant’s. Such services cannot give rise to legitimate right or interest e.g. bona fide offering of goods or services since the Respondent is making available pirated version of content uploaded by the Complainant’s users.
Besides, by using the disputed domain name the Respondent is giving the false impression that it is associated with and/or endorsed by the Complainant.
With regard to the third element of the test, the Respondent’s conduct amounts to clear bad faith in opinion of the Complainant on the following reasoning and evidence.
ONLYFANS trademark is well-known and the Respondent began operating a website that provides products and services in direct competition with the Complainant after the registration of the disputed domain name. Therefore, the Respondent knew or should have known about the Complainant’s trademark rights at the moment of the registration.
Further evidence of bad faith registration can be found when the Respondent failed to respond the Complainant’s cease and desist letter by the fact of using a privacy service combined with a failure to submit a response is additional evidence of bad faith registration.
With reference to the use of the disputed domain name, the Complainant shows how it directs to a commercial website that offers adult entertainment content (including content pirated from the Complainant’s users) in direct competition with the Complainant’s services. Thus, the Respondent is diverting Internet traffic from the Complainant’s website.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsUnder paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which
the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
There are no exceptional circumstances within paragraph 5(e) of the Rules to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response. Under paragraph 14(a) of the Rules in the event of such a “default” the Panel is still required “to proceed with a decision on the complaint”, whilst under paragraph 14(b) it “shall draw such inferences there from as it considers appropriate”. This dispute resolution procedure is accepted by the domain name registrant as a condition of registration.
A. Identical or Confusingly SimilarThis first requirement is twofold. Accordingly, the Complainant has first showed evidence of multiple trademarks rights within the scope of the Policy and second, the evidence shows the apparent reproduction of ONLYFANS in the disputed domain name along with the term “my” and the gtLD “.top”. Further the Panel looks at WIPO Overview 3.0, section 1.7 and 1.8 to support a finding of confusingly similarity.
It is well established that a gTLD, in this case “.top”, is typically irrelevant to the consideration of identity or confusing similarity between a trademark and a domain name.
Therefore, the first requirement is met under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy list non-exhaustively circumstances that demonstrate rights or legitimate interests in a domain name. None of them apply in the present case. There is no indicia that the Respondent is making a bona fide offering of goods or services. On the contrary, it seems the Respondent is taking advantage of the well-known ONLYFANS trademark to divert consumers to its website. Moreover, the evidence provided demonstrates how the Respondent’s site search results take advantage of the Complainant’s users content and therefore, pirated, as it is claim by the Complainant.
There is no evidence that the Respondent is known by the corresponding disputed domain name.
The Panel also finds that the use of a domain name suggesting affiliation cannot be “legitimate” since the disputed domain name fully incorporates the Complainant’s trademark. See The Procter & Gamble Company v. Whoisguard, Inc. / Enzo Gucci, Xtremcare, Tony Mancini, USDIET, USDIET Ltd,
WIPO Case No. D2016-1881.
While the Complainant has made a prima facie case, the Panel looks at the WIPO Overview 3.0, section 2.1: “[W]here 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”. The Panel finds that the Respondent has failed to produce any evidence to establish any rights or legitimate interests in the disputed domain name by not providing a response after due notification of the Complaint.
Under these circumstances the Panel finds that the Complainant has succeeded the second requirement and therefore the Respondent lacks rights or legitimate interests in the disputed domain name to the satisfaction of the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad FaithIt is well established that ONLYFANS trademark is well known worldwide. Such reputation explains the use made of the disputed domain name by the Respondent in a competing website in an attempt to take advantage of its recognition. Therefore, the Panel finds that the Respondent knew or should have known about the Complainant and its trademarks. Moreover, the mere registration of a well-known mark by an unaffiliated entity can, under certain circumstances, itself support a finding of registration in bad faith. WIPO Overview 3.0, section 3.1.4.
The Panel must return to the purposes of the second element where have been concluded that the disputed domain name involves a risk of affiliation and that the Respondent has attempted to divert consumers to his competing website. Such use and purportedly affiliation fits with the circumstances listed in Paragraph 4(b)(iv) of the Policy as evidence of the registration and use of a domain name in bad faith: "by using the domain name, you have intentionally attempted to attract, for commercial gain, internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location".
Unauthorized third party content use is to be deemed bad faith for the purposed of this requirement. Nothing in the file allows the Panel to conclude otherwise.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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
Manuel Moreno-Torres
Sole Panelist
Date: December 20, 2021
1 European Union Intellectual Property Office
2 United States Patent and Trademark Office