ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Fenix International Limited v. Ready Real Estate Video, Ready Real Estate Video Dantzler Case No. D2023-1292 1. The Parties The Complainant is Fenix International Limited c/o Walters Law Group, United States of America ("United States"). The Respondent is Ready Real Estate Video, Ready Real Estate Video Dantzler, Canada. 2. The Domain Name and Registrar The disputed domain name is registered with Launchpad.com Inc. (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 24, 2023. On March 27, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 27, 2023, 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 March 29, 2023. In accordance with the Rules, paragraph 5, the due date for Response was April 18, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 1, 2023. The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on May 5, 2023. 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. page 2 4. Factual Background The Complainant owns and operates the website to which the domain name resolves, and which is used as a social media platform that allows users to post and subscribe to audiovisual content. The Complainant is the owner of several trademark registrations around the world, among others, the following: Trademark No. Registration Jurisdiction Date of Registration International Classes ONLYFANS 017946559 European Union January 9, 2019 9, 35, 38, 41, and 42 ONLYFANS UK00917946559 United Kingdom January 9, 2019 9, 35, 38, 41, and 42 ONLYFANS UK00917912377 United Kingdom January 9, 2019 9, 35, 38, 41, and 42 ONLYFANS 5769267 United States June 4, 2019 35 ONLYFANS.COM 5769268 United States June 4, 2019 35 OF 6918293 United States December 6, 2022 9 OF 6918294 United States December 6, 2022 9 OF 6938572 United States December 6, 2022 38, 41, and 42 The disputed domain name was registered on November 8, 2022 and resolves to a website that purportedly offers to Internet users pretended credits in the Complainant's website after completing a certain number of steps. 5. Parties' Contentions A. Complainant The Complainant argued the following: That the Complainant's website to which the domain name resolves is one of the most popular websites in the world, with over 180 million registered users. That, according to similar web, it is the page 3 94th most popular website on the Internet and the 53rd most popular website in the United States. That, since the website to which the domain name resolves is one of the most visited websites in the world, it has become a prime target for cybersquatters wishing to profit from the goodwill that the Complainant has gained. That the disputed domain name was registered on November 8, 2022, being that the Complainant has had prior registered rights since at least June 4, 2016, in addition to its common law rights that have been recognized by prior UDRP panels. I. Identical or Confusingly Similar That the disputed domain name is identical or confusingly similar to the Complainant's trademarks. That the disputed domain name consists of the Complainant's exact trademark with the addition of the term "credit", which does nothing to avoid confusing similarity. That the use of the Top-Level Domain ("TLD") ".com" does not change the result in the confusing similarity analysis since it does not sufficiently distinguish the disputed domain name from the Complainant's trademark. II. Rights or Legitimate Interests That the Respondent has no connection to or affiliation with the Complainant, and that the Respondent has not received any authorization, license, or consent to use the Complainant's trademark in the disputed domain name, or in any other manner. That the Respondent is not commonly known by the Complainant's trademarks and does not hold any trademark rights to the disputed domain name. That the Complainant has achieved global fame and success in a short time, which makes it clear that the Respondent knew of the Complainant's trademark and knew that it had no rights to, or legitimate interests in the disputed domain name. That there is no evidence indicating that the Respondent is known by the text of the disputed domain name. That once a complainant asserts that a respondent has no rights or legitimate interests, the burden of production then shifts to the respondent to provide concrete evidence showing rights to, or legitimate interests in the disputed domain name at hand. That a disputed domain name comprising the complainant's trademark and additional terms cannot constitute fair use when doing so effectively impersonates or suggests sponsorship or endorsement by the complainant. That the Respondent cannot claim the right to use the disputed domain name under fair use since it entirely incorporates the trademark ONLYFANS plus the additional term "credit", which creates a risk or implied affiliation since the term "credit" refers to the storing of funds on the Complainant's services. That offering or selling credits for use on the Complainant's services does not give rise to legitimate rights or interests. That the website to which the disputed domain name resolves contains a logo that is identical to the Complainant's registered logo. page 4 That the Respondent registered and used the disputed domain name not because it refers to, or is associated with the Respondent, but because the disputed domain name is identical or confusingly similar to the domain name and the trademarks used by the Complainant in association with its services. III. Registered and Used in Bad Faith a) Registered in Bad Faith That the disputed domain name was registered on November 8, 2022, after the Complainant secured registered rights to the trademarks, and long after the Complainant had acquired common law rights to said trademarks, which have acquired distinctiveness. That this acquired distinctiveness is so strong that the Complainant's website is among the Top 100 most popular websites in the world. That previous UDRP panels have found that the registration of a domain name that is confusingly similar to a widely known trademark may create a presumption of bad faith. That the Complainant's trademark ONLYFANS has been recognized in numerous previous cases decided under the Policy as "internationally well-known amongst the relevant public", such that the Respondent either knew or ought to have known of the Complainant's trademark, and likely registered the disputed domain name to target said trademark. That it is more probable than not that the Respondent was fully aware of the Complainant's trademarks at the time of registration, considering that the website to which the disputed domain name resolves comprises references to the Complainant's ONLYFANS trademark and displays its registered logo. That bad faith registration has also been found when a disputed domain name includes the Complainant's trademark plus an additional term that "enhances the likelihood of confusion with the Complainant", such as the Respondent's use of the Complainant's trademark plus the additional term "credit". That the disputed domain name is being used to redirect visitors to a website that comprises "offers" for users to complete in order to purportedly receive USD 500 in credit to the Complainant's website, which evidences the Respondent's bad faith. That this use is being made for commercial gain and creates a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Respondent's website. That the Complainant sent a cease-and-desist letter to the Respondent on January 24, 2023, but that the Respondent did not reply, which is further evidence of bad faith. That the Respondent registered the disputed domain name to divert Internet traffic from the Complainant's website to a website making available potentially harmful "offers" for users to receive a credit on the Complainant's website. b) Used in Bad Faith That since the Complainant's trademarks are well-recognized, bad faith should be found. That use in bad faith is found where a disputed domain name directs users to a commercial website that offers goods and services in direct competition with those of the trademark owner. That using a logo similar to the Complainant's ONLYFANS logo is further evidence of bad faith use. page 5 That the disputed domain name resolves to a website that purportedly provides USD500 in credit on the Complainant's website if a certain number of deals and offers are completed, which constitutes a phishing scheme that constitutes bad faith use. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants 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 was registered and is being used in bad faith. Given the Respondent's failure to submit a formal Response, the Panel may decide this proceeding based on the Complainant's undisputed factual allegations under paragraphs 5(f), 14(a), and 15(a) of the Rules, (see Joseph Phelps Vineyards LLC c. NOLDC, Inc., Alternative Identity, Inc., and Kentech, WIPO Case No. D2006-0292). A. Identical or Confusingly Similar The Complainant has filed evidence showing that it owns registrations for the trademark ONLYFANS in the United States, the European Union, and the United Kingdom, and that it holds common law rights arising from the use of said trademark. The disputed domain name is confusingly similar to the Complainant's trademark ONLYFANS, as it incorporates said trademark entirely, with the addition of the term "credit". Previous panels appointed under the Policy have found that the addition of a descriptive term to a disputed domain name, such as "credit", does not avoid a finding of confusing similarity (see sections 1.7, 1.8, and 2.5.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), see also Fenix International Limited v. Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf / Marius Pop, WIPO Case No. D2021-2715; Fenix International Limited c/o Walters Law Group v. Marius, WIPO Case No. D2021-1340, and Fenix International Limited c/o Walters Law Group v. Dilshan Omantha, WIPO Case No. DCC2021-0002). The addition of the TLD ".com" to the disputed domain name constitutes a technical requirement of the Domain Name System ("DNS"), and as such may be disregarded under the first element confusing similarity test (see section 1.11 of the WIPO Overview 3.0). In light of the above, the first element of the Policy has been met. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in the disputed domain name: (i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if it did not acquire trademark or service mark rights; or page 6 (iii) 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. The Complainant has asserted that there is no relationship between the Complainant and the Respondent, that it has not granted any authorization, license, or consent to the Respondent to use its trademark ONLYFANS in the disputed domain name, and that the Respondent has not been commonly known by the disputed domain name (see Beyoncé Knowles v. Sonny Ahuja, WIPO Case No. D2010-1431; and Six Continents Hotels, Inc. v. IQ Management Corporation, WIPO Case No. D2004-0272). The Respondent did not contest these allegations. The Panel agrees with previous panels appointed under the Policy, in that the ONLYFANS trademark is well known (see Fenix International Limited c/o Walters Law Group v. Andrei Ivanov, WIPO Case No. D2021-1284; Fenix International Limited c/o Walters Law Group v. Marius, WIPO Case No. D2021-1340; Fenix International Limited c/o Walters Law Group v. Dilshan Omantha, WIPO Case No. DCC2021-0002; Fenix International Limited v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Bent Harracksingh, WIPO Case No. D2021-1337; Fenix International Limited v. Datos privados, WIPO Case No. D2021-1306; Fenix International Limited v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Andrei Ivanov, WIPO Case No. D2021-1339; Fenix International Limited v. Kiril Kirilov, WIPO Case No. D2021-0853; Fenix International Limited c/o Walters Law Group v. Juan Anton, Onlyfanx, WIPO Case No. D2021-0837; Fenix International Limited v. WhoisGuard Protected, WhoisGuard Inc. / Genadiy Ivanov, WIPO Case No. D2021-0828; Fenix International Limited v. WhoisGuard Protected, WhoisGuard Inc. / kadene wignall, WIPO Case No. D2021-0825; Fenix International Limited c/o Walters Law Group v. Danesco Trading Ltd. / AVO Ltd AVO Ltd, WIPO Case No. D2021-0863; Fenix International Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Yazid Laiss / Stive Belb / Ahmed Bel Bouahli, WIPO Case No. D2021-0152; Fenix International Limited c/o Walters Law Group v. WhoisGuard, Inc., WhoisGuard Protected / Marry Mae Cerna, WIPO Case No. D2021-0327; Fenix International Limited v. Domains By Proxy, LLC. / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-3447; Fenix International Limited v. Tuncay Karatas, Skalonga Event, WIPO Case No. D2021-0132 and Fenix International Limited v. Perfect Privacy, LLC/ Chad Moston, Speedplexer, WIPO Case No. D2020-1162). The Complainant has submitted evidence showing that the website to which the disputed domain name resolves predominantly displays the Complainant's trademark and registered logo, and that it offers credit to Internet users to use on the Complainant's website. The Respondent has not contested said evidence. This evidence suggests that the Respondent has attempted to impersonate the Complainant since Internet users, looking for the Complainant, who come across the website to which the disputed domain name resolves, might think that the said website is affiliated to or sponsored by the Complainant, which cannot be deemed as a bona fide offering of goods and services. The disputed domain name is confusingly similar to the Complainant's trademark ONLYFANS, to which the term "credit" is added, which suggests that the Respondent has targeted the Complainant to offer to Internet users pretended credits in the Complainant's website after completing some steps, which could constitute a phishing scheme. Therefore, this conduct cannot be considered as a legitimate noncommercial or fair use of the disputed domain name (see section 2.4 of the WIPO Overview 3.0, see also Multi Media, LLC v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / John Holmes, WIPO Case No. D2020-1213: "The Panel further finds that the Respondent's use of the Complainant's trademark in the disputed domain name and on Respondent's website, to provide free of charge what appears to be content that was originally uploaded to the Complainant's website, does not amount to a legitimate noncommercial or fair use of the disputed domain name pursuant to paragraph 4(c)(iii) of the Policy)." The consensus view among panels appointed under the Policy is that the use of a domain name for illegal activity, such as impersonation, or phishing, cannot confer rights or legitimate interests to a respondent (see section 2.13.1 of the WIPO Overview 3.0: see also SVB Financial Group v. WhoisGuard Protected, WhoisGuard, Inc. / Citizen Global Cargo, WIPO Case No. D2018-0398; and Fenix International Limited v. page 7 Leandro Vinicius Bau WIPO Case No. D2021-0584: "This website may deceive the Internet users to collect login credentials and other sensible information in an apparent phishing scam, which cannot be considered a bona fide offering of goods or services"). Finally, according to the evidence submitted by the Complainant and not contested by the Respondent, the website to which the disputed domain name resolves predominantly displays the Complainant's ONLYFANS trademark and logo. This shows that the Respondent has attempted to impersonate the Complainant. A finding of impersonation prevents a determination of a bona fide offering of goods (see sections 2.5.1, and 2.13.1 of the WIPO Overview 3.0; see also Self-Portrait IP Limited v. Franklin Kelly, WIPO Case No. D2019-0283). In sum, the Complainant has presented a prima facie case that the Respondent lacks rights to or legitimate interests in the disputed domain name. The Respondent did not submit any evidence or arguments to challenge the Complainant's assertions. In light of the above, the second element of the Policy has been fulfilled. C. Registered and Used in Bad Faith According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith: (i) circumstances indicating that the respondent has registered or the respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that 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 web site or location or of a product or service on its web site or location. The fact that the Respondent registered the disputed domain name, which includes the well-known Complainant's trademark ONLYFANS, alongside the term "credit", and the fact that the website to which the disputed domain name resolves contains references to the trademark ONLYFANS and displays its registered logo, shows that the Respondent has targeted the Complainant's well-known trademark, and suggests opportunistic bad faith (see section 3.2.1 of the WIPO Overview 3.0; see also L'Oréal v. Contact Privacy Inc. Customer 0149511181 / Jerry Peter, WIPO Case No. D2018-1937; Gilead Sciences Ireland UC / Gilead Sciences, Inc. v. Domain Maybe For Sale c/o Dynadot, WIPO Case No. D2019-0980; Dream Marriage Group, Inc. v. Romantic Lines LP, Vadim Parhomchuk, WIPO Case No. D2020-1344; Valentino S.p.A. v. Qiu Yufeng, Li Lianye, WIPO Case No. D2016-1747; Landesbank Baden-Württemberg (LBBW) v. David Amr, WIPO Case No. D2021-2322 "Given the distinctiveness of the Complainant's trademark, it is reasonable to infer that the Respondent has registered the Disputed Domain Name with full knowledge of the Complainant's trademarks, constituting opportunistic bad faith. The Panel finds it hard to see any other explanation than that the Respondent knew of the Complainant's well-known trademark."). page 8 Previous panels appointed under the Policy have found that the mere registration by an unauthorized party of a domain name that is identical or confusingly similar to a well-known trademark can, under certain circumstances, create a presumption of bad faith in itself (see section 3.1.4 of the WIPO Overview 3.0, see also Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation; Toyota Motor Sales, U.S.A., Inc., and Toyota Motor Sales De Mexico, S. De R.L. de C.V. v. Salvador Cobian, WIPO Case No. DMX2001-0006, and Ferrari S.p.A. v. Ms. Lee Joohee (or Joo-Hee), WIPO Case No. D2003-0882). This is so in the present case. According to the evidence submitted by the Complainant and not contested by the Respondent, the Respondent appears to have implemented a phishing scheme whereas Internet users are offered a credit of USD 500 to use on the Complainant's website, and has attempted to impersonate the Complainant for commercial gain, which actions constitute bad faith under the Policy (see also SwissCare Europe v. michael click, Active OutDoors LLC, WIPO Case No. D2022-1496: ("This Panel considers that, in appropriate circumstances, a failure to pass the impersonation test may properly lead to a finding of registration and use in bad faith because of the fact that, at its heart, such a domain name has been selected and used with the intention of unfairly deceiving Internet users, notably those who are (actual or potential) consumers of the trademark owner."); Philip Morris Products S.A. v. Domain Administrator, Registrant of iqosatismaganiz.com (apiname com) / Anl Girgin, Teknoloji Sarayi, WIPO Case No. D2019-0466; Self-Portrait IP Limited v. Franklin Kelly, supra; and Friedman and Soliman Enterprises, LLC v. Gary Selesko, M&B Relocation and Referral, LLC, WIPO Case No. D2016-0800) These facts constitute bad faith under paragraph 4(b)(iv) of the Policy (see section 3.1.4 of the WIPO Overview 3.0 ("the use of a domain name for per se illegitimate activity such as the sale of counterfeit goods or phishing can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith."). The abovementioned facts show that not only the Respondent registered the disputed domain name in bad faith, but also, that the Respondent has used the disputed domain name in bad faith. Therefore, the third element of the Policy has been proven. 7. Decision For 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, be transferred to the Complainant. /Kiyoshi Tsuru/ Kiyoshi Tsuru Sole Panelist Date: May 27, 2023
Full & Egal Universal Law Academy