The Complainant is Fenix International Limited c/o Walters Law Group, United States of America.
The Respondent is Domain Admin, Whois Privacy Corp, Bahamas.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 14, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 15, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 10, 2021.
The Center appointed Ganna Prokhorova as the sole panelist in this matter on November 15, 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 is a company incorporated in the United States that operates an online social media platform that allows users to post and subscribe to audiovisual content.
The Complainant holds registrations for the trademark ONLYFANS and variations of it in several countries, including i.e.:
- the United States trademark registration No. 5769267 for the word ONLYFANS, registered on June 4, 2019;
- the European Union trademark registration No. 017912377 for the word ONLYFANS, registered on January 9, 2019; and
- he European Union trademark registration No. 017946559 for ONLYFANS & device, registered on January 9, 2019.
The Complainant registered the domain name
The disputed domain name was registered on May 6, 2021, and has been used in connection with a website offering adult entertainment.
Prior to commencing the present procedure, on August 17, 2021, the Complainant sent a cease-and-desist letter to the Respondent. No response was received.
5. Parties’ Contentions A. ComplainantThe Complainant asserts to have registered the domain name
According to the Complainant, the disputed domain name is identical or confusingly similar to its ONLYFANS trademark, not conferring the addition of the descriptive suffix “-sliv” rights or legitimate interests in the disputed domain name to the Respondent. The word “sliv” is a Russian translation of the word “plum” and is used to refer to the adult entertainment content creators on the Complainant’s website. The addition of such a generic word does nothing to avoid confusing similarity.
The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain name. No evidence indicates that the Respondent is known by the terms included in the disputed domain name, and the Respondent has no authorization to use the Complainant’s trademark or to download and post any of the content included in the Complainant’s social media platform. The website linked to the disputed domain name hosts adult entertainment content in direct competition with the Complainant’s services, including pirated content obtained from the Complainant’s platform. According to the Complainant, 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 rights or legitimate interests.
The disputed domain name was registered and is being used in bad faith. Due to the popularity of the Complainant’s platform, the Respondent was likely aware of the ONLYFANS mark when it registered the disputed domain name to operate a website providing services in direct competition with the Complainant. The Respondent did not respond to the cease-and-desist letter sent by the Complainant. The Respondent intentionally registered and is using the disputed domain name to divert Internet traffic from the Complainant’s website to a site offering content pirated from the Complainant’s users, which strongly suggests the Respondent’s bad faith, being aware of the Complainant and its trademark, intentionally seeking to profit from the confusion with this mark.
The Complainant requests that the disputed domain name be cancelled. Given the vast number of domain names infringing on the Complainant’s Marks, the Complainant does not want to take possession of all the infringing domain names and is aware that the disputed domain name can potentially be re-registered after cancellation.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsTo succeed, in a UDRP complaint, a 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 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.
Respondent had 20 days to submit a 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 respond to the Complaint, the Panel’s decision shall be based upon the Complaint.
The Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complainant’s contentions. However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
It is further noted that the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views captured therein.
A. Identical or Confusingly SimilarAccording to paragraph 4(a)(i) of the Policy it should be established that the disputed domain name is identical or confusingly similar to a trademark in which the complainant has rights.
The Complainant has demonstrated ownership of its ONLYFANS trademarks. Therefore, the Panel is satisfied that the Complainant has registered trademark rights in the ONLYFANS trademark.
The Panel also finds that the disputed domain name reproduces the Complainant’s mark in its entirety. The addition of the term “sliv”, which is a Russian translation of the word “plum” used to refer to the adult entertainment content creators on the Complainant’s website, does not prevent a finding of confusing similarity.
It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. See WIPO Overview 3.0, section 1.7.
This Panel also finds that a hyphen is an additional element that do not serve to prevent a finding of confusing similarity of the disputed domain name (see section 1.8 of the WIPO Overview 3.0).
As th addition of the generic-Top-Level Domain (“gTLD”) is generally disregarded under the first element, the Panel accordingly holds that the disputed domain name is confusingly similar to the Complainant’s trademark ONLYFANS.
Therefore, the Panel considers the requirements of the first element of paragraph 4(a)(i) of the Policy to be satisfied.
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.
The consensus view of prior 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.”
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because it is not his name, there is no license from the Complainant to use the Complainant’s trademark, there is no evidence of the Respondent’s use, or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services, and the evidence is that it resolves to a webpage with content that competes with content of the kind served by the Complainant.
Noting the facts and contentions listed above, the Panel finds that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests, so the burden of production shifts to the Respondent.
However, the Respondent has not replied to the Complaint, not providing any explanation connected to any of the circumstances included in paragraph 4(c) of the Policy or any other circumstance that may be considered as rights or legitimate interests in the disputed domain name.
As the Respondent has not replied to the Complainant’s contentions, that burden has not been discharged, and the Panel has considered the Complainant’s prima facie case to be sufficient to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel also finds that the nature of the disputed domain name and the associated website content carries a risk of implied affiliation with the Complainant’s trademark and that such a false suggestion of affiliation is not a fair or legitimate use (see WIPO Overview 3.0, section 2.5.1).
Thus, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithAccording to paragraph 4(a)(iii) of the Policy, it should be established that the disputed domain name has been registered and is being used in bad faith.
In the absence of any evidence to the contrary, this Panel accepts the Complainant’s evidence and finds that the Respondent has taken the Complainant’s trademark ONLYFANS and incorporated it in the disputed domain name along with a hyphen and the Russian word “sliv”, meaning “plum”, without the Complainant’s consent or authorization, for the purpose of capitalizing on the reputation of the trademark to infringe upon the Complainant’s rights.
Therefore, on the issue of registration, taking into account the composition of the disputed domain name and the adult content of the website it resolves to, the Panel is satisfied that the Respondent knew of the Complainant’s trademark ONLYFANS when it registered the disputed domain name. Furthermore, the Panel believes that the Respondent was fully aware of the Complainant’s trademark ONLYFANS at the time of registration, considering the website at the disputed domain name contains a logo identical to the Complainant’s registered EU trademark No. 017946559 for ONLYFANS & device, registered on January 9, 2019.
In the absence of any evidence to the contrary, this Panel accepts the Complainant’s evidence that the Respondent registered the confusingly similar disputed domain name to offer services in direct competition with the Complainant (including content potentially pirated from Complainant’s users), including providing entertainment service in the nature of a website featuring non-downloadable video, photographs, images, audio, and in the field of adult entertainment.
Bad faith use is found where the disputed domain name directs users to a commercial website that offers goods and services in direct competition with the trademark owner. See Guardant, Inc. v. Jeff Park,WIPO Case No. D2009-0631.
The Complainant sent a cease-and-desist letter to the Respondent on August 17, 2021, demanding the Respondent stop using and cancel the disputed domain name. The Respondent did not respond, thus necessitating the filing of this Complaint. The Respondent’s failure to respond to this correspondence is further evidence of bad faith. See Encyclopedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/k/a Country Walk a/k/a Cupcake Party,WIPO Case No. D2000-0330.
Therefore, on the issue of use, the Complainant’s evidence is that the disputed domain name, resolves to a webpage displaying adult content which, this Panel finds, 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, sponsorship, affiliation, or endorsement of the Respondent’s website (see WIPO Overview 3.0, section 3.1.4).
In light of the above facts and reasons, the Panel therefore determines that the disputed domain name was registered and is being used in bad faith, and that the Complainant has satisfied the condition set out in 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
Ganna Prokhorova
Sole Panelist
Date: November 29, 2021