ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Fenix International Limited v. Mxnter Fxck Case No. D2024-2428 1. The Parties The Complainant is Fenix International Limited c/o Walters Law Group, United States of America. The Respondent is Mxnter Fxck, Thailand. 2. The Domain Names and Registrar The disputed domain names , , and are registered with NameCheap, Inc., (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2024, concerning only the disputed domain names and . On June 14, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 14, 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 June 19, 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 amended Complaint on June 19, 2024, requesting the addition of the disputed domain names and . On July 4, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the additional disputed domain names. On July 4, 2024, 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 together with the amended 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 July 9, 2024. In accordance with the Rules, paragraph 5,
page 2 the due date for Response was July 29, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 31, 2024. The Center appointed Áron László as the sole panelist in this matter on August 12, 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. 4. Factual Background The Complainant is a British internet content subscription service and social media network that was established in 2016. The Complainant holds several registered trademarks (the “Trademarks”) for the sign ONLYFANS, including: - United States of America trademark ONLYFANS Reg. No. 5769267 registered on June 4, 2019; - European Union trademark ONLYFANS Reg. No. 017912377 registered on January 9, 2019; - International Registration ONLYFANS Reg. No. 1507723 registered on November 2, 2019 extended to designate inter alia Thailand on May 28, 2020; and numerous other registered trademarks for the sign ONLYFANS.COM and the Onlyfans logo in various jurisdictions. The Complainant also claims to have unregistered trademarks. The Complainant asserts that the “www.onlyfans.com” website is one of the most popular websites in the world, with over 180 million subscribers. According to one Internet ranking service, the site is ranked 97th in the world in terms of traffic. Since 2016, the Complainant has operated a website at for the purpose of hosting a platform for subscribers to view and post audiovisual content, mainly adult entertainment material. The disputed domain names were registered on the following dates: Disputed domain name: Registration Date: December 21, 2023 Disputed domain name: Registration Date: December 21, 2023 Disputed domain name: Registration Date: January 25, 2024 Disputed domain name: Registration Date: January 22, 2024 The disputed domain names relate to websites presumably offering adult content. The websites are constructed in an almost identical style: the title reflects the actual disputed domain name and the Onlyfans logo, supplemented according to the actual disputed domain name, appears in the top left corner. The Respondent is a private person from Thailand. The Complainant sent cease and desist letters to the Respondent, who did not respond.
page 3 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 the disputed domain names are identical with or confusingly similar to the Complainant’s Trademarks. Concerning the disputed domain name the Complainant cites section 1.12 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), which states that if the Complainant’s trademark is in the disputed domain name, adding other third-party marks is not sufficient to avoid a finding of confusing similarity to the Complainant’s mark. The disputed domain name is just the complainant’s trademark with part of the third-party’s trademark “PORNHUB” added. The Complainant adds that using the word “ONLYFAN” (in singular) instead of the Trademark (ONLYFANS) does not prevent the finding of confusing similarity. The addition of the descriptive, general or meaningless elements “asia”, “free”, “89” and “stars” cannot prevent a finding of confusing similarity because the trademark is recognisable in the disputed domain names. With regard to the second element, the Complainant states that the Respondent has no connection or affiliation with the Complainant and has not been granted authorisation to use the Trademarks in the disputed domain names or in any other manner. The Respondent is not commonly known by the Marks and does not hold any trademarks for the disputed domain names. The use of the disputed domain names comprising the Complainant’s trademark and certain additional terms cannot constitute fair use, when doing so effectively impersonates or suggests sponsorship or endorsement by the Complainant. The websites available through the disputed domain names offer adult entertainment services in direct competition with Complainant’s services, which cannot give rise to legitimate rights or interests. Furthermore, the websites display a logo identical to the Complainant’s registered “OF” logo, with the Respondent’s own terms superimposed over it. The Respondent registered and used the disputed domain names not because they refer to or are associated with the Respondent, but because the disputed domain names are identical or confusingly similar to the domain name and the Trademarks used by the Complainant in association with the Complainant’s services. With regard to the third element, the Complainant asserts that the disputed domain names were registered considerably later than the Complainant’s Trademarks, which have achieved a high degree of distinctiveness. The Complainant’s website is among the Top 100 most visited websites globally. The registration of a domain name that is confusingly similar to a widely-known trademark, as is the case here, creates a presumption of bad faith. Furthermore, bad faith registration has been identified in instances where the disputed domain name incorporates the complainant’s trademark and an additional word that increases the likelihood of confusion with the complainant. This suggests that the website at the disputed domain name is operated by the Complainant and provides access to the Complainant’s services. The Respondent has engaged in a pattern of registering infringing domain names having registered the four disputed domain names within a short period of time. The disputed domain names are also used in bad faith, since they direct users to a commercial website that offers goods and services in direct competition with the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions.
page 4 6. Discussion and Findings Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy requires that a complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (i) the domain name registered by the respondent 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 domain name; and (iii) the domain name has been registered and is being used in bad faith. In view of the Respondent’s failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint. However, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. WIPO Overview 3.0, section 4.3. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily 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. WIPO Overview 3.0, section 1.7. The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds that the Trademark is recognisable within the disputed domain names. In light of the above, the Panel finds that the disputed domain names are confusingly similar to the Trademark in question, in accordance with WIPO Overview 3.0, section 1.7. The addition of the terms “asia”, “star”, “free”, the number “89”, and the term “hubs” does not overcome the confusing similarity. The same applies to the use of the singular “onlyfan” instead of the “onlyfans”. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. 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 on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). 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 5 The Complainant has stated that the Respondent has no connection or affiliation with the Complainant and has not been granted authorisation to use the Trademarks in the disputed domain names or in any other manner. The Complainant has claimed that the Respondent is not commonly known by the Marks and does not hold any trademarks for the disputed domain names. 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. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise. Panels have held that the use of a domain name for illegal activity here, claimed impersonation/passing off can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. The use of the disputed domain names, which include the Complainant’s trademark and certain additional terms, cannot constitute fair use, as it effectively imitates or suggests sponsorship or endorsement by the Complainant. The websites accessible through the disputed domain names provide adult entertainment services, which are in direct competition with the Complainant’s services, which cannot give rise to any legitimate rights or interests. In addition, the websites display a logo identical to the Complainant’s registered “OF” logo with the Respondent’s own terms superimposed, which confirms that the Respondent is deliberately attempting to pass off its services as those of the Complainant. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. Panels have held that the use of a domain name for illegal activity here, claimed impersonation/passing off constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain names constitutes bad faith under the Policy. The Panel notes that the Respondent intentionally attempts to attract, for commercial gain, Internet users by creating a likelihood of confusion with the complainant’s mark. The disputed domain names were registered considerably later than the Complainant’s Trademarks, which have achieved a high degree of distinctiveness. The disputed domain names incorporate the complainant’s trademark and additional elements, which suggests that the websites at the disputed domain names are operated by the Complainant and provide access to the Complainant’s services. Also, the disputed domain names relate to websites, which imitate the Complainant’s website using similar names and a slightly modified version of the Complainant’s logo. The disputed domain names are also used in bad faith, since they direct users to a commercial website that offers goods and services in direct competition with the Complainant. Furthermore, the Respondent has engaged in a pattern of registering infringing domain names having registered the four disputed domain names within a short period of time. The Panel finds that the Complainant has established the third element of the Policy.
page 6 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. /Áron László/ Áron László Sole Panelist Date: August 26, 2024
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