ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Fenix International Limited v. Alan XI Case No. D2024-1583 1. The Parties The Complainant is Fenix International Limited, c/o Walters Law Group, United States of America (“U.S.”). The Respondent is Alan Xi, Australia. 2. The Domain Names and Registrar The disputed domain names , , , are registered with Name.com, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 15, 2024. On April 16, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 16, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (Redacted for Privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on April 18, 2024, 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 April 23, 2024. 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 April 24, 2024. In accordance with the Rules, paragraph 5, the due date for Response was May 14, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 15, 2024. The Center appointed Francine Tan as the sole panelist in this matter on June 3, 2024. 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 is a provider of a social media platform that allows users to post and subscribe to audiovisual content on the Internet. It owns and operates the website located at the domain name , which is extremely popular worldwide, with more than 180 million registered users. According to similarweb, it is the 97th most popular website, and the 55th most popular website in the U.S. The Complainant owns many trade mark registrations for ONLYFANS and related marks around the world, including the following: - European Union (“EU”) trade mark No. 017946559 for registered on January 9, 2019; - EU trade mark No. 017912377 for ONLYFANS, registered on January 9, 2019; - United Kingdom (“UK”) trade mark registration No. UK00917912377 for ONLYFANS, registered on January 9, 2019; - UK trade mark registration No. UK00917946559 for registered on January 9, 2019; - U.S trade mark registration No. 5769267 for ONLYFANS, registered on June 4, 2019; - U.S. trade mark registration No. 5769268 for ONLYFANS.COM, registered on June 4, 2019; and - U.S. trade mark registration No. 6253475 for registered on January 26, 2021. The Complainant has owned and operated its domain name since January 29, 2013. It states that it has used the ONLYFANS marks since at least June 4, 2016. The respective registration dates of the disputed domain names are as follows: - - registered on December 7, 2023; - - registered on December 13, 2023; - - registered on December 13, 2023; - , registered on December 13, 2023. They resolve to various Thai-focused websites containing pornography and adult entertainment. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names. Notably, the Complainant contends that: i. The disputed domain names are identical or confusingly similar to the Complainant’s ONLYFANS trade marks. The disputed domain names contain the entirety of the Complainant’s ONLYFANS trade mark with the addition of the prefix “th”, which stands for “Thailand” and which does nothing to avoid confusing similarity. Three of the disputed domain names have the additional suffixes “69”, “99”, and “-vk”, respectively, which also do not avoid confusing similarity with the Complainant’s ONLYFANS trade mark. The addition of the generic Top-Level Domain (“gTLD”) “.com” is disregarded in the assessment of confusing similarity as it is a standard registration requirement. ii. The Respondent has no rights or legitimate interests in the disputed domain names. The Respondent has no connection or affiliation with the Complainant. The Complainant has not authorized, licensed, or consented to the use of its ONLYFANS trade mark in any way. The Respondent is not commonly known by the ONLYFANS trade mark and has no trade mark rights in relation to the disputed domain names. Given the global fame and success of the Complainant, it is clear that the Respondent knew of the Complainant’s
page 3 ONLYFANS trade marks at the time of registering the disputed domain names. The Respondent is not making a fair use of the disputed domain names as he is trying to impersonate the Complainant or suggest sponsorship by the Complainant. The Respondent’s website to which the disputed domain names resolve offer adult entertainment services, including watermarked content pirated from the Complainant’s users, which are in direct competition with the Complainant’s services. Using the disputed domain names to host commercial websites that advertise goods and services in direct competition with the trade mark owner does not give rise to legitimate rights or interests. The Respondent’s websites feature logos that are similar to the Complainant’s registered ONLYFANS and OF logos, in an attempt to pass his websites off as those of the Complainant. iii. The disputed domain names were registered and are being used in bad faith. The disputed domain names were registered long after the Complainant registered its ONLYFANS trade marks and long after the Complainant had common law rights therein. The Complainant’s trade marks are widely known and have been recognized in earlier UDRP proceedings as internationally well known to the public. It is clear that the Respondent registered the disputed domain names to target the Complainant’s ONLYFANS marks especially since the logos on the Respondent’s websites are similar to the Complainant’s trade marks. The Respondent’s failure to respond to the Complainant’s cease and desist letter of February 1, 2024, and failure to file a Response in this proceeding are also evidence of bad faith. The Respondent is using the disputed domain names to divert Internet traffic away from the Complainant’s website to his own websites offering content that is in direct competition with the Complainant’s own content, which is evidence of bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trade mark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has shown it has rights in respect of a trade mark or service mark for the purposes of the Policy. The entirety of the ONLYFANS mark is reproduced and recognizable within the disputed domain names. The Panel agrees that the addition of the elements “th”, “69”, “99”, and “-vk” in the respective disputed domain names does not prevent a finding of confusing similarity between the disputed domain names and the ONLYFANS mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Although 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 difficult 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 of rights or legitimate interests shifts to the respondent to proffer relevant evidence. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
page 4 Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. There is no evidence that the Respondent is commonly known by any of the disputed domain names and that he was licensed or authorized by the Complainant to use the ONLYFANS trade mark or to register the disputed domain names. The Complainant’s use and registration of the ONLYFANS trade marks long predate the registration dates of the disputed domain names. The Respondent failed to rebut the prima facie case established by the Complainant. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The disputed domain names incorporate the entirety of the Complainant’s distinctive and well-established trade mark. The ONLYFANS trade marks have been registered for many years and extensively used by the Complainant, The Panel is persuaded that the Respondent knew of and targeted the Complainant and its ONLYFANS trade marks at the time he registered the disputed domain names. The fact that the disputed domain names resolve to webpages bearing logos which are highly similar to the Complainant’s ONLYFANS trade marks, and also offer content in competition with the Complainant’s offerings, supports a finding of bad faith use. Taking into account the distinctiveness and reputation of the Complainant’s trade marks, the Respondent’s silence in this proceeding and failure to respond to the Complainant’s cease and desist letter, and the use of the disputed domain names for an infringing website (which has not been disputed by the Respondent), the Panel concludes that the Respondent has registered and is using the disputed domain names in bad faith. The Panel finds that the Complainant has established the third element of the Policy. 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 names , , , and be transferred to the Complainant. /Francine Tan/ Francine Tan Sole Panelist Date: June 13, 2024
Full & Egal Universal Law Academy