ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Fenix International Limited v. Mudasir Ejaz, yehrishtakyakehlata Case No. D2024-3227 1. The Parties The Complainant is Fenix International Limited c/o Walters Law Group, United States of America. The Respondent is Mudasir Ejaz, yehrishtakyakehlata, Pakistan. 2. The Domain Name and Registrar The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2024. On August 7, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 7, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Privacy service provided by Withheld, for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on August 9, 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 August 13, 2024. 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 August 16, 2024. In accordance with the Rules, paragraph 5, the due date for Response was September 5, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 9, 2024. The Center appointed Elise Dufour as the sole panelist in this matter on September 18, 2024. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration
page 2 of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant owns and operates a social media platform through the domain name registered on January 29, 2013. The Complainant’s social media platform allows users to post and subscribe to audiovisual content worldwide. In 2024, the website “www.onlyfans.com” surpassed 180 million registered users and was ranked as the 97th most popular website globally by the platform Similarweb. The Complainant is the owner of several trademark registrations for ONLYFANS, including the following: - European Union trademark registration No. 017912377 for ONLYFANS (word mark), registered on January 9, 2019, in international classes 9, 35, 38, 41, and 42; - United States of America trademark registration No. 5769267 for ONLYFANS (word mark), registered on June 4, 2019, in international class 35. The disputed domain name was registered on January 6, 2024. The Complainant sent a cease-and-desist letters to the Respondent on February 23, 2024, demanding the Respondent to stop using and cancel the disputed domain name. The Respondent did not respond. The dispute domain name resolves to a website containing logos identical to the Complainant’s registered logos. 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 name. First, the Complainant asserts that it owns registrations on the trademark ONLYFANS. The Complainant also asserts that it registered the domain name on January 29, 2013, and has extensive common law rights in it trademark throughout the world that commenced by, at latest, July 4, 2016, well before the Respondent registered the disputed domain name on January 6, 2024. The disputed domain name is confusingly similar to the Complainant’s previous trademarks. The disputed domain name consists of the Complainant’s trademark with the only difference being the insertion of other terms ““apk”” which does nothing to avoid confusing similarity, as “apk” stands for “Android Package Kit”. The generic Top-Level Domain “.tools” in the disputed domain name may be disregarded. Second, the Complainant asserts that the Respondent lacks rights or legitimate interests in the disputed domain name. 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 trademark in the disputed domain name or in any other manner. The Respondent is not commonly known by the trademark and does not hold any trademarks for the disputed domain name. The websites to which the disputed domain name resolves contains logos that are identical to the Complainant’s registered logos for use with downloadable mobile applications. The Complainant contends that the Respondent is using the disputed
page 3 domain name to direct Internet users to websites offering potentially illegal services, which can never confer rights or legitimate interests on the Respondent. Third, the Complainant asserts that the disputed domain name was registered and is being used in bad faith. The Complainant submits that the Complainant’s trademark (which predates the registration of the disputed domain name) is well-known. At the time of registration of the disputed domain name, the Respondent knew, or at least should have known, of the existence of the Complainant's trademarks. The Complainant further asserts that bad faith registration should be found since the Respondent used the Complainant’s ONLYFANS trademark and the additional term “apk” (standing for “Android Package Kit”), which enhances the likelihood of confusion. Besides, the Respondent registered the confusingly similar disputed domain name to offer services in direct competition with the Complainant. The Complainant further explains that it sent cease-and-desist letter to the Respondent on February 23, 2024, but the Respondent did not respond – which is further evidence of bad faith. The Complainant also underlines that the Respondent is a serial cyber squatter who repeatedly registers domain names that contain Complainant’s trademark without authorization. Finally, the Complainant contends that there is no plausible circumstance under which the Respondent could legitimately register or use the disputed domain name and that, thus, the disputed domain name was registered and is being used by the Respondent in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 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 of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. Based on the available record, the Panel finds the Complainant has shown rights in respect of a trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the ONLYFANS mark is reproduced and recognizable within the disputed domain name. The Panel finds that the addition of the elements “apk” in the disputed domain name does not prevent a finding of confusing similarity between the disputed domain name 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. 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 name. There is no evidence
page 4 that the Respondent is commonly known by any of the disputed domain name or that the Respondent was licensed or authorized by the Complainant to use the ONLYFANS trademark or to register the disputed domain name. The Complainant’s use and registration of the ONLYFANS trademarks long predate the registration date of the disputed domain name. The Respondent failed to rebut the prima facie case established by the Complainant. The composition of the disputed domain name carries a risk of implied affiliation with the Complainant, which is further supported by the use of the Complainant’s logo in the websites resolved by the disputed domain name. WIPO Overview 3.0, section 2.5.1. Moreover, the Panel notes that the websites associated with the disputed domain name is being used to offer a mobile application which allow users to access copyrighted content from the Complainant’s services. Such use cannot confer any rights or legitimate interests on the Respondent. WIPO Overview 3.0, section 2.13.1. In view of the absence of any evidence supporting any rights or legitimate interests in the disputed domain name and the Complainant’s credible argument that the Respondent’s website attempted to impersonate the Complainant and was suspended for fraudulent activity, the Panel concludes that the Complainant has established the second element of the Policy. 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 name constitute 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 name was registered considerably later than the Complainant’s trademarks, which have achieved a high degree of notoriety. The disputed domain name incorporates the Complainant’s trademark and additional elements, which suggests that the websites at the disputed domain name is operated by the Complainant and supposedly provide access to the Complainant’s services. Also, the disputed domain name resolves to a website which imitates the Complainant’s website using the Complainant’s logo. The disputed domain name was also used in bad faith, since they direct users to a commercial website that offers a mobile application which allow users to access copyrighted content from the Complainant’s services. The Panel finds that the Complainant has established the third element of the Policy.
page 5 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. /Elise Dufour/ Elise Dufour Sole Panelist Date: October 2, 2024
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