WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fenix International Limited v. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Juan Paolo Dino
Case No. D2020-3460
1. The Parties
The Complainant is Fenix International Limited c/o Walters Law Group, United States of America (“United States”).
The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States, / Juan Paolo Dino, Philippines.
2. The Domain Name and Registrar
The disputed domain name <only4fans.net> is registered with Launchpad.com Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2020. On December 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 21, 2020, 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 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 December 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 17, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 18, 2021.
The Center appointed Antony Gold as the sole panelist in this matter on January 26, 2021. 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 owns and operates a social media platform located at the domain name <onlyfans.com>. This platform has been operative since 2016 and enables Internet users to post and subscribe to online audiovisual content. The Complainant’s website has been ranked as the 466th most popular website globally and as the 216th most popular website in the United States.
The Complainant’s website is branded as “ONLYFANS” and it owns a number of trade marks to protect its trading style. These include, by way of example only, European Union trade mark, registration number 017912377, for ONLYFANS, in classes 9, 35, 38, 41, and 42, registered on January 9, 2019.
The disputed domain name was registered on November 11, 2020. Shortly after the date of registration, it resolved to a webpage which simply containing the greeting “Welcome to Ulol!”. In addition, the Respondent’s website also contained another web page, not directly accessible from the home page, which featured a fictitious individual user profile in a style and format essentially the same as that provided by the Complainant for use by members of its website services.
The registration details of the disputed domain name initially showed Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) as the registrant. On November 20, the Complainant’s representatives sent a cease and desist letter to the registrant requesting the transfer of the disputed domain name to the Complainant. Within a few weeks from that date, the WhoIs details for the disputed domain name had been changed to show Juan Paolo Dino as the registrant and the Respondent’s website had been deactivated.
5. Parties’ Contentions
The Complainant says that the disputed domain name is identical or confusingly similar to a trade mark in which it has rights. It draws attention to its portfolio of ONLYFANS trade marks, full details of one of these marks having been set out above. The Respondent has engaged in typosquatting in that the disputed domain name comprises an intentional misspelling of the Complainant’s well-known trade mark. The disputed domain name comprises the Complainant’s ONLYFANS trade mark with the addition of the number “4”. However, the disputed domain name will still deceive Internet users in that it remains confusingly similar to the Complainant’s mark.
The Complainant says also that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Whilst it was active, the website to which the disputed domain name resolved simply comprised a holding page and a subpage created by the Respondent which was designed to look like the profile page of a user of the Complainant’s website.
There is no evidence that the Respondent is known by the disputed domain name, nor is there any evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. The only reason the Respondent registered and used the disputed domain name is because it is identical or confusingly similar to the Complainant’s <onlyfans.com> domain name and to its ONLYFANS trade marks, which are used by the Complainant in association with its services. This does not provide the Respondent with rights or a legitimate interest in the disputed domain name.
Once a complainant asserts that a respondent has no rights or legitimate interests with respect to a domain name, the burden shifts to the respondent to provide evidence which demonstrates that it does. However, the Respondent is unable to do this because the use of the disputed domain name for illegal activities can never confer rights or legitimate interests.
Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. The circumstances evidencing bad faith registration and use which are set out at paragraph 4(b) of the Policy are not exhaustive but, irrespective of whether the Panel applies any of these specific provisions or simply applies common sense, the Respondent’s conduct amounts to clear bad faith.
By the time the disputed domain name was registered in November 2020, the Complainant had been using its ONLYFANS mark for at least 4 years and it had acquired both registered and common law rights in its mark. Even if the Respondent argues that it did not have actual knowledge of the Complainant’s ONLYFANS mark, as at the time of its registration of the disputed domain name, it had constructive knowledge of it. See, for example, HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062. The Respondent registered the disputed domain name in an attempt to divert Internet traffic from the Complainant’s website to its own website and such registration is accordingly in bad faith.
As at November 20, 2020, the webpage to which the disputed domain name resolved used a light blue and white colour scheme and font, buttons and layout that mimicked the layout of the Complainant’s website. The copying of the Complainant’s trade dress comprises bad faith use; see Banco Bradesco S.A. v. Carlos Roberto Batista de Morais, WIPO Case No. D2010-1271. The Respondent’s failure to reply to the Complainant’s cease and desist letter comprises an additional indication of bad faith; see Remy Cointreau Luxembourg S.A. v. Deividas Samulionis, UAB “Sentosa”, WIPO Case No. D2016-2232. Similarly, the Respondent’s use of a privacy service, when combined with its failure to reply to serve a reply to the Complaint amounts to further evidence of bad faith as is the fact that the Respondent changed the contact information associated with the disputed domain name after receiving a demand letter from the Complainant. In fact, the current WhoIs information displays an address and postal code for the Respondent which does not exist.
There are no plausible circumstances in which the Respondent could legitimately register and use the disputed domain name and it has accordingly been registered by the Respondent and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Dealing, first, with the Respondent’s failure to file a response to either Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided details of the registered trade marks it owns for ONLYFANS, which establish its rights in this mark.
As a technical requirement of registration, the generic Top Level Domain (“gTLD”), that is “.net” in this case, is typically disregarded when assessing confusing similarity. The only difference between the Complainant’s ONLYFANS mark and the disputed domain name is the insertion of the number 4 between the words “only” and “fans”. This does not prevent a finding that the disputed domain name is confusingly similar to the Complainant’s mark. As explained at section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “[…] 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 ONLYFANS trade mark is recognizable within the disputed domain name and the Panel accordingly finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out circumstances, without limitation, by which a respondent might demonstrate that it has rights or a legitimate interest in a domain name. These are, summarized briefly: if the respondent has been using the domain name in connection with a bona fide offering of goods and services, if the respondent has been commonly known by the domain name, or if the respondent has been making a legitimate noncommercial or fair use of the domain name.
The Panel considers first the period during which the disputed domain name resolved to a website which contained a holding page and the dummy user profile page. Whilst the Respondent’s precise motivation for establishing this webpage is unclear it seems geared to mimicking the Complainant or at least drawing traffic intended for it, it is not possible to conceive of a good faith reason why the Respondent would create user profiles in a format intended to confuse Internet users into thinking that they were related to the Complainant’s website. Accordingly, such conduct does not comprise a bona fide offering of goods and services.
The second of the circumstances set out at paragraph 4(c) is inapplicable; there is no evidence to indicate that the Respondent has been commonly known by the disputed domain name. Nor does the use, which the Respondent made of the disputed domain name, comprise a legitimate noncommercial or a fair use of it, not least because the confusing similarity between the disputed domain name and the Complainant’s ONLYFANS trade mark is prone to lead Internet users to believe that it is connected with the Complainant.
If the Complaint is considered on the basis of the disputed domain name’s presently inactive status, the finding under the second element is the same; the mere holding of the disputed domain name does not comprise either a bona fide offering or goods and services nor a legitimate, noncommercial or fair use of it.
The Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once it has done so, the burden of production shifts to the respondent to show that it does have such rights or legitimate interests. In the absence of any response from the Respondent to the Complaint, it has failed to satisfy that burden.
The Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant’s mark is relatively well known and the evidence establishes that, shortly after its registration of the disputed domain name, the Respondent had created the dummy profile page referred to above. Accordingly, as at the date of registration of the disputed domain name, the Respondent both knew of the Complainant and intended to profit unfairly, in some manner, from the connection which Internet users would make between the disputed domain name and the Complainant. In these circumstances, its registration was in bad faith; see, by way of example, the reasoning of the panel in Swarovski Aktiengesellschaft v. WhoisGuard Protected / Peter D. Person, WIPO Case No. D2014-1447.
Paragraph 4(b) of the Policy sets out, without limitation, circumstances which, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstance at paragraph 4(b)(iv), in summary, is that, by using the domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
The Respondent’s precise motives in establishing the dummy user profile are unclear (though they seem intended to target the Complainant), but it is not possible to conceive of a good faith motive for doing so and, having regard to its failure to reply to either the Complainant’s cease and desist letter or the Complaint, no conceivable justification for having done so has been provided by it. It is unclear whether Internet users who accessed the Respondent’s website were likely spontaneously to have encountered the dummy profile page, although any Internet users who did so and who were aware of the Complainant’s social media offering were likely to have been confused into believing there was a connection between them. But even if they did not, the Respondent clearly intended to develop its nascent webpage into a website which was intended to confuse Internet users into believing that it was connected with, or authorized by, the Complainant. The registration and use of the disputed domain name by the Respondent in these circumstances therefore falls within the circumstance of bad faith outlined at paragraph 4(b)(iv) of the Policy. See, for example, Walgreen Co. v. Muhammad Azeem / Wang Zheng, Nicenic International Group Co., Limited, WIPO Case No. D2016-1607.
The current inactive status of the disputed domain name comprises passive holding of it by the Respondent. Section 3.3 of the WIPO Overview 3.0 explains that: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ”coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put”.
Applying these factors, briefly, to the current circumstances; (i) the Complainant’s mark is well known and the Respondent was evidently aware of it as at the time of its registration of the disputed domain name; (ii) the Respondent has not replied to the Complaint; (iii) the Respondent has sought to conceal its identity through the use of inaccurate address details; and (iv) it is impossible to think of any good faith use to which the disputed domain name could be put.
For the above reasons, the Panel finds that the disputed domain name was both registered and is being used in bad faith.
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, <only4fans.net> be transferred to the Complainant.
Date: February 9, 2021