The Complainant is Fenix International Limited c/o Walters Law Group, United States of America (“United States”).
The Respondent is James Michael, 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 October 15, 2021. On October 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 18, 2021, the Registrar transmitted by email to the Center its verification 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 20, 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 22, 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 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 14, 2021. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on November 30, 2021.
The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on December 14, 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 owns and operates the website located at the domain name
The Complainant has registered the following trademarks (“ONLYFANS trademarks”):
- the European Union Trade mark, ONLYFANS No EU017946559, filed on August 22, 2018, registered on January 9, 2009, for products and services in classes 9, 35, 38, 41, and 42;
- the European Union Trade mark, ONLYFANS No EU017912377, filed on June 5, 2018, registered on January 9, 2009 for products and services in classes 9, 35, 38, 41, and 42;
- the United States Trademark, ONLYFANS No 5,769,267, registered on June 4, 2019, for products and services in class 35, first use in commerce on July 4, 2016;
- the United States Trademark, ONLYFANS.COM No 5,769,268, registered on June 4, 2019, for products and services in class 35, first use in commerce on July 4, 2016.
The Complainant also registered the domain name
The disputed domain name
The disputed domain name resolves to an activate website which offers adult entertainment services.
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 to which the Respondent did not respond.
5. Parties’ Contentions A. ComplainantFirst, the Complainant stands that the disputed domain name is identical, or at very least confusingly similar, to the Complainant’s ONLYFANS trademarks, given that the disputed domain name consists of the Complainant’s ONLYFANS trademark with the insertion of the descriptive term “leaks” at the end. The Complainant adds that the use of the generic Top-Level domain (“gTLD”) <.com> does not change the result and even so, the disputed domain name is identical to the Complainant’s trademark ONLYFANS.COM.
Second, the Complainant contends that the Respondent has no rights or legitimate interest in respect of the disputed domain name, as the Respondent has no connection or affiliation with the Complainant and has not received any authorization, license, or consent, whether express or implied, to use the Complainant’s trademarks in the disputed domain name or in any other manner. The Complainant adds that no evidence indicates that the Respondent is known by the term of the disputed domain name. This should shift the burden of production on the Respondent to provide concrete evidence that it has rights to, or legitimate interests in, the disputed domain name. The Complainant also states that if the disputed domain name resolves in a website that offers services in direct competition with the Complainant’s services, this does not give rise to any legitimate rights or interests and that this is even more the case when this website offers, free of charge, content previously published on the Complainant’s website.
Moreover, the Complainant finds that the disputed domain name was registered in bad faith, considering that (i) the disputed domain name was registered long after the Complainant registered the ONLYFANS trademarks, (ii) the disputed domain name is confusingly similar to a widely-known trademark, and (iii) the disputed domain name includes the Complainant’s trademark and an additional word that “enhances the likelihood of confusion with the Complainant and thereby suggests that the website at the disputed domain name is authorized by the Complainant or provides products and services in direct competition with the Complainant”, (iii) the Respondent did not respond to the Complainant’s Cease and desist letter, and (iv) the Respondent clearly registered the disputed domain name to divert Internet traffic from the Complainant’s website.
Lastly, the Complainant asserts that the Respondent is using the disputed domain name in bad faith, given that the disputed domain name directs to a commercial website that offers services in direct competition with the Complainant’s services. The Complainant also states that the Respondent hid from the public behind a WhoIs privacy wall and that all the circumstances of the case must lead the Panel to consider that the disputed domain name is used in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, the Complainant shall prove the following three elements:
(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.
A. Identical or Confusingly SimilarAccording to the Policy, paragraph 4(a)(i), the Complainant shall prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
First of all, the Panel finds that the Complainant has provided evidence that it has rights in the ONLYFANS trademarks.
Then, the Panel wishes to remind that the first element of the UDRP serves essentially as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name.
This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name. 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 the UDRP (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Third Edition (“WIPO Overview 3.0”)).
Regarding the disputed domain name, the Panel finds that it is composed of:
- the ONLYFANS trademark,
- the insertion of the term “leaks”,
- gTLD in a domain name is viewed as a standard registration requirement and as such is disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a trademark.
Therefore, the Panel holds that the Complainant has established the first element of paragraph 4(a) of the Policy and that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate InterestsAccording to the Policy, paragraph 4(a)(ii), the Complainant shall demonstrate that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Policy, paragraph 4(c), outlines circumstances that if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name.
These circumstances are:
- before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
- the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
- the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
According to prior UDRP panel decisions, it is sufficient that the complainant shows prima facie that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
Indeed, while the overall burden of proof in UDRP proceedings is on the complainant, UDRP 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 prima facie 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 (see section 2.1 of the WIPO Overview 3.0).
According to the Panel, the Complainant has shown prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Indeed, it appears that the Respondent has no connection or affiliation with the Complainant and has not received any authorization, license, or consent, whether express or implied, to use the Complainant’s ONLYFANS trademark in the disputed domain name or in any other manner. Moreover, the Panel finds that there is no evidence that the Respondent is known by the term of the disputed domain name or that the Respondent has the intent to use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the disputed domain name is linked to a website, reproducing content previously published at the Complainant’s website without authorization, which are offered free of charge by the Respondent, without remunerating the Complainant or the respective creators.
In any case, the Respondent did not reply to the Complainant’s contentions. Moreover, 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.
Therefore, according to the Policy, paragraph 4(a)(ii) and 4(c), the Panel considers that the Respondent does not have rights or legitimate interests in the disputed domain name
According to the Policy, paragraph 4(a)(iii), the Complainant shall prove that the disputed domain name has been registered and is being used in bad faith.
Thus, paragraph 4(b) provides that any one of the following non-exclusive scenarios constitutes evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 respondent’s website or location or of a product or service on the respondent’s website or location.
First, the Panel considers that it is established that the Complainant’s ONLYFANS trademarks were registered before the registration of the disputed domain name so that there is a presumption of bad faith registration of the disputed domain name, given the fact that the disputed domain name wholly reproduces the ONLYFANS trademark. In addition, the Panel considers that the Respondent clearly had knowledge of the Complainant’s prior trademarks at the time of registration of the disputed domain name, as the website accessible from the disputed domain name reproduces content previously published on the Complainant’s website without authorization. Moreover, the addition in the disputed domain name of the term “leaks” to the Complainant’s trademark is specifically intended to indicate that this website offers content leaked from the Complainant’s website. As a result, there is no doubt that at the time of registration of the disputed domain name, the Respondent was aware of the Complainant’s mark and registered the disputed domain name in bad faith.
Lastly, the Panel finds that the Respondent is obviously using the disputed domain name in bad faith to divert Internet users from the Complainant’s website. Indeed, the disputed domain name directs to a website reproducing content previously published at the Complainant’s website without authorization, which are offered without remuneration of the Complainant or of the respective creators of the content. Moreover, the Respondent did not respond to the Complainant cease-and-disease letter and hid its identity behind a WhoIs privacy wall.
Therefore, in view of all the circumstances of this case, the Panel holds that the Respondent has registered and is using the disputed domain name in bad faith according to the Policy, paragraph 4(a)(iii) and 4(b).
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,
Christiane Féral-Schuhl
Sole Panelist
Date: December 28, 2021