WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fenix International Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Samuel Walton
Case No. D2020-3131
1. The Parties
The Complainant is Fenix International Limited, United Kingdom, represented by Walters Law Group, United States of America (“United States”).
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Samuel Walton, United Arab Emirates.
2. The Domain Name and Registrar
The disputed domain name, <onlyfansplus.com> (the “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 November 20, 2020. On November 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 23, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 25, 2020 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 November 25, 2020.
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 November 26, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 16, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 20, 2020.
The Center appointed Tony Willoughby as the sole panelist in this matter on December 28, 2020. 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.
The Respondent used a privacy service when registering the Domain Name. The Respondent’s identity was disclosed by the Registrar in response to the Center’s registrar verification request. The Center’s invitation to the Complainant to amend the Complaint followed on from that disclosure. In response to that invitation the Complainant added the Respondent as an additional respondent to the Complaint. For the purposes of this decision the Panel treats the underlying registrant as the Respondent and all references herein to the “Respondent” are references to Samuel Walton.
4. Factual Background
The Complainant is the owner and operator of the website connected to the domain name, <onlyfans.com> (registered on January 29, 2013), which offers subscriptions to online content, including adult entertainment under the name “OnlyFans”. The Complainant is the owner of several trade mark registrations of trade marks incorporating the “OnlyFans” name, including the following registrations:
European Union Trade Mark Registration No. 017912377 ONLYFANS (word mark) registered on January 9, 2019 (application filed June 5, 2018) for a variety of goods and services in classes 9, 35, 38, 41 and 42.
United States Trade Mark Registration No. 5769267 ONLYFANS (word mark) registered on June 4, 2019 (application filed on October 29, 2018) in class 35 for arranging subscriptions of the online publications of others. The registration incorporates a first use in commerce claim of July 4, 2016.
United States Trade Mark Registration No. 5769268 ONLYFANS.COM (word mark) registered on June 4, 2019 (application filed on October 29, 2018) in class 35 for arranging subscriptions of the online publications of others. The registration incorporates a first use in commerce claim of July 4, 2016.
In addition to its registered trade mark rights, the Complainant claims common law trade mark rights in respect of the name “OnlyFans”. It cites in support of its claim to common law trade mark rights Fenix International Limited v. c/o whoisprivacy.com / Tulip Trading Company, Tulip Trading Company Limited WIPO Case No. DCO2020-0038 in respect of the domain name, <onlyfans.co> which was registered on May 30, 2017, prior to the filing of any of the Complainant’s trade mark applications. The learned panel in that case made the following finding:
“Although the Complainant has not provided the usual indicia of acquired secondary meaning including revenues and advertising expenditures, the Panel is satisfied on the basis of the evidence of the number of registered users and ‘hits’ per month that the Complainant had in fact established rights in ONLYFANS and ONLYFANS.COM as unregistered trademarks before the disputed domain name was first registered.”
On the basis of similar evidence filed by the Complainant in this case, the Panel is satisfied that the Complainant had acquired common law trade mark rights in respect of its ONLYFANS and ONLYFANS.COM trade marks prior to the registration of the Domain Name.
The Domain Name was registered on April 30, 2020. It is not currently connected to an active website, but from screenshots put in evidence by the Complainant it is apparent that the Domain Name was connected to an active website prior to the filing of the Complaint.
On September 17, 2020 the Complainant’s representative sent a cease and desist letter to the privacy service used by the Respondent in respect of the domain name, <onlyfansplus.app>. The letter stated that the website connected to that domain name “appears to offer a mobile application that allows users to fraudulently access paywall protected content” on the Complainant’s website. The letter set out the Complainant’s trade mark rights and sought inter alia transfer of that domain name.
A reply was received the same day from ‘zipy games’ using an Alan Jarvie email address, who stated inter alia that he had done what was asked of him in respect of <onlyfansplus.app> and “I only acknowledge that I used <onlyfansplus.com> which is now closed.” He concluded by demanding that the costs incurred by him be paid by the Complainant.
On September 25, 2020, the Complainant’s representative responded, confirming that the <onlyfansplus.app> domain name had been transferred, but noting that contrary to his assertion that the Domain Name was not closed, it was still live and should be transferred. There was no reply to that email or the ‘chaser’ sent on October 27, 2020.1
On November 6, 2020 the Complainant’s representative captured a screenshot of the webpage connected to the Domain Name. The webpage features the image of a mobile phone and the following text:
OnlyFans++is a tweaked app which gives you access to any
Only Fans page subscription for FREE
How to install OnlyFans++?
It’s easy! Select your device platform and install the app
The text and format of that webpage was substantially identical to that connected to the <onlyfansplus.app> domain name, a screenshot of which was captured by the Complainant’s representative on September 17, 2020.
Both websites featured pages incorporating offers of rewards, but requiring the provision of information to enable the content of the offers to be unlocked.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to the Complainant’s ONLYFANS and ONLYFANS.COM trade marks; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Domain Name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) the Domain Name is identical or confusingly similar to a trade mark 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.
B. Identical or Confusingly Similar
The Domain Name comprises the Complainant’s trade mark ONLYFANS, the descriptive word, “plus”, and the “.com” generic Top-Level Domain (“gTLD”) identifier. It also incorporates the Complainant’s ONLYFANS.COM registered trade mark, albeit with the descriptive word, “plus”, inserted between “onlyfans” and the gTLD identifier.
Section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) explains the test for identity or confusing similarity under the first element of the Policy and includes the following passage:
“While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.”
The Complainant’s trade marks (registered and unregistered – see Section 4 above) are readily recognizable in their entirety in the Domain Name. The Panel finds that the Domain Name is confusingly similar to trade marks in which the Complainant has rights.
C. Rights or Legitimate Interests
As can be seen from Section 4 above, the Complainant had first drawn to its attention the domain name, <onlyfansplus.app>, held in the name of the privacy service used by the Respondent for the Domain Name. The cease and desist letter sent to the privacy service by the Complainant’s representative led to a response from ‘zipy games’ using an Alan Jarvie email address. Neither of those names match that of the Respondent. However, the fact that the websites originally connected to both the <onlyfansplus.app> domain name and the Domain Name were substantially identical in appearance and content satisfies the Panel that the two domain names were under common control and most likely under the control of the Respondent.
The <onlyfansplus.app> domain name was transferred to the Complainant as agreed, but the Respondent falsely claimed that the website connected to the Domain Name was no longer live and then failed to follow up with transfer of the Domain Name as requested by the Complainant’s representative. No more was heard from the Respondent 2. The Respondent has elected not to respond to the Complainant’s contentions.
The Complainant contends that the Respondent registered and used the Domain Name not because it refers to or is associated with Respondent, but because the Domain Name is substantially identical and confusingly similar to the Complainant’s <onlyfans.com> domain name and ONLYFANS and ONLYFANS.COM trade marks used by the Complainant in association with its services.
The Complainant contends that the Respondent registered and has been using the Domain Name in bad faith for the purpose of diverting traffic from the Complainant’s website and for the purposes of phishing. The Complainant points to the commercial links on the Respondent’s website and to the rewards links requiring visitors to the website to provide information to access the relevant website content. The Complainant contends that such use cannot give rise to any rights or legitimate interests in respect of the Domain Name in the hands of the Respondent.
The Panel is satisfied that the Complainant had made out a prima facie case under this element of the Policy, in other words a case calling for an answer from the Respondent. Respondent has not responded to the Complainant’s contentions.
On the evidence filed by the Complainant and in the absence of any explanation from the Respondent and any challenge to the Complainant’s contentions, the Panel finds that the Respondent has no rights of legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
The Panel finds that the Respondent registered the Domain Name with knowledge of the Complainant’s ONLYFANS and ONLYFANS.COM trade marks and with intent to use the reputation of those trade marks to attract Internet users to its website for commercial gain. While some visitors to the Respondent’s website may well immediately realize that the website is not a website of or authorized by the Complainant, it is the view of the Panel that many of them will have visited the website in the erroneous belief that it is such a website.
Having arrived at the website they are faced with what appears to be an invitation to install a mobile application allowing users to fraudulently access paywall protected content on the Complainant’s website, thereby depriving the Complainant of subscription revenue. They are also provided with links to potential financial rewards on the submission of information. The Panel has been unable to identify what information is sought and is therefore unable to verify the Complainant’s allegation that the Respondent is seeking the information for phishing purposes. However, on any view the Respondent’s website was a website designed for commercial gain relying on the deception of Internet users as to its source, sponsorship, affiliation or endorsement and relying upon the reputation and goodwill associated with the Complainant’s ONLYFANS and ONLYFANS.COM trade marks for its success.
Paragraph 4(b)(iv) of the Policy provides that a circumstance leading to a finding of bad faith registration and use under the Policy is where the Respondent has used the Domain Name intentionally to attract Internet users to the Respondent’s website for commercial gain “by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of [the] website …”.
The fact that the Respondent’s website is no longer active is of no moment. It could be revived at any time and in the hands of the Respondent remains an unjustified threat hanging over the head of the Complainant. As such it represents, in the view of the Panel, a continuing use of the Domain Name in bad faith.
The Panel finds that the Domain Name has been registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <onlyfansplus.com>, be transferred to the Complainant.
Date: January 3, 2021
1 For completeness, it is appropriate to mention that since completion of the decision in this case, the Center received on January 3, 2021 an email from the same individual Alan Jarvie mainly stating that he has stopped using the site, app or any name pertaining to the Complainant in accordance with the requests sent by the Complainant. In the mentioned email communication, the Respondent provided the authorization code for the transfer of the Domain Name, and asked not to be associated with this Domain Name.
2 Apart from the email to the Center of January 3, 2021 referred to in footnote 1.