ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Fenix International Limited v. AMF AMF Case No. D2024-3377 1. The Parties The Complainant is Fenix International Limited c/o Walters Law Group, United States of America (“United States”). The Respondent is AMF AMF, United States. 2. The Domain Name and Registrar The disputed domain names , , and are registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2024. On August 19, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 19, 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 (Registration Private, Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on August 21, 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 September 5, 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 September 6, 2024. In accordance with the Rules, paragraph 5, the due date for Response was September 26, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 30, 2024.
page 2 The Center appointed W. Scott Blackmer as the sole panelist in this matter on October 2, 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 operates a social media platform at “www.onlyfans.com” that allows subscribers to share user-created audiovisual content (such as adult entertainment, music, sports, and personal fitness), typically on a pay-per-view basis with revenues shared between the creator and the Complainant. The Complainant registered this domain name in January 2013, and the platform quickly gained an international following. The Complainant’s website has more than 180 million registered users. According to similarweb, it is the 97th most popular website on the World Wide Web, and the 55th most popular website in the United States. Unsurprisingly, it is a frequent target of cybersquatters, as reflected in numerous UDRP proceedings. A previous UDRP panel, examining evidence such as that included in the present record, concluded that the Complainant’s platform grew so quickly in popularity that the Complainant acquired “extensive legal rights in the ONLYFANS mark throughout the world that commenced by, at latest, July 4, 2016”. Fenix International Limited v. Domain Admin, Beacons AI Inc., WIPO Case No. D2024-0113. In addition to common law rights in the ONLYFANS marks and related figurative marks, the Complainant holds numerous relevant trademark registrations, including the following: Mark Jurisdiction Registration Number Registration Date Goods or Services ONLYFANS (word) European Union 017912377 January 9, 2019 International Class 9, 35, 38, 41, 42; Computer software and platforms for social networking and transmission of photographs and information, etc. ONLYFANS (figurative) European Union 017946559 January 9, 2019 International Class 9, 35, 38, 41, 42; Computer software and platforms for social networking and transmission of photographs and information, etc. ONLYFANS (word) United Kingdom UK0017912377 January 9, 2019 International Class 9, 35, 38, 41, 42; Computer software and platforms for social networking and transmission of photographs and information, etc.
page 3 ONLYFANS (figurative) United Kingdom UK0017946559 January 9, 2019 International Class 9, 35, 38, 41, 42; Computer software and platforms for social networking and transmission of photographs and information, etc. ONLYFANS (word) United States of America 5769267 June 4, 2019 International Class 35, arranging subscriptions of the online publications of others ONLYFANS.COM (word) United States of America 5769268 June 4, 2019 International Class 35, arranging subscriptions of the online publications of others ONLYFANS (word) International (multiple national designations) 1507723 November 2, 2019 International Class 9, 35, 38, 41, 42; Computer software and platforms for social networking and transmission of photographs and information, etc. The disputed domain names were all registered on January 27, 2024, in the name of a domain privacy service. After receiving notice of the Complaint in this proceeding, the Registrar identified the underlying registrant as the Respondent “AMF AMF”, listing a postal address in California, United States, and a Yahoo contact email address. Screenshots show that all of the disputed domain names have resolved or redirected to websites displaying similar content: downloadable adult entertainment games or dating sites requiring payment by credit card. Counsel for the Complainant sent a cease-and-desist letter to the Respondent through the Registrar on March 21, 2024, demanding cancellation of the disputed domain names. There was no reply, and this proceeding ultimately followed. 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 all identical or confusingly similar to its ONLYFANS and ONLYFANS.COM marks, both registered and claimed as common law marks, as these marks are recognizable in the disputed domain names, with a single spurious letter or number inserted in the string. The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed
page 4 domain names, as it has no permission from the Complainant or association with the Complainant and does not appear to be known by a corresponding name. The Complaint attaches evidence showing that the Complainant’s website was very well known globally by the time the Respondent registered the disputed domain names in January 2024, creating a presumption of bad faith. The Complainant finds further indications of bad faith in the Respondent’s use of a privacy shield to register the disputed domain names and the Respondent’s failure to reply to the Complainant’s cease-and-desist letter. The Complainant concludes that the Respondent registered confusingly similar domain names in a bad faith effort to misdirect Internet users for commercial gain to associated adult entertainment websites. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that a complainant must demonstrate each of the following: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) and the respondent has no rights or legitimate interests in respect of the disputed domain name; (iii) and the disputed domain name has been registered and is being used in bad faith. Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. 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. The Complainant has shown rights in respect of a trademark or service mark (the registered ONLYFANS and ONLYFANS.COM marks) for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. There is also substantial evidence of unregistered trademark or service mark rights in these marks (WIPO Overview 3.0, section 1.3), but these are not necessary to ground the Complaint. The Panel finds the marks are recognizable within the disputed domain names, which differ only by inserting an additional, spurious letter or number (“h”, “j”, “x”, or “7”, respectively), which does not prevent the Complainant’s marks from being clearly recognizable in the disputed domain names. Accordingly, the disputed domain names are confusingly similar to the marks for the purposes of the Policy. WIPO Overview 3.0, sections 1.7 and 1.9. 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
page 5 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. 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. There is no indication in the record that the Respondent has been known by a corresponding name. Simply redirecting Internet users to competing commercial websites does not support a claim to rights or legitimate interests. WIPO Overview 3.0, section 2.5.3. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The record sufficiently establishes that the Complainant’s ONLYFANS marks are widely known and well established online. It is not plausible that the Respondent was unaware of them when registering multiple disputed domain names that all simply insert a single, spurious letter or number, in the domain name string corresponding to the Complainant’s marks. 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. One of these, paragraph 4(b)(iv), is intentionally attempting to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant’s mark. This is apposite in the circumstances of the present case, where the Respondent has used the disputed domain names to redirect Internet users to third party competing websites for adult entertainment and dating. In these circumstances, an inference of bad faith is further supported by the Respondent’s consistent efforts to remain in the shadows. The Respondent registered the disputed domain names through a domain privacy service and used them for websites that did not reveal the website operator. The Respondent did not reply to the Complainant’s cease-and-desist letter or file a Response to the Complaint in this proceeding. The available evidence points to bad faith, and the Respondent has not come forward to offer an alternative explanation. 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. /W. Scott Blackmer/ W. Scott Blackmer Sole Panelist Date: October 16, 2024
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