WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fenix International Limited c/o Walters Law Group v. WhoisGuard, Inc., WhoisGuard Protected / Marry Mae Cerna
Case No. D2021-0327
1. The Parties
The Complainant is Fenix International Limited c/o Walters Law Group, United States of America (“United States”).
The Respondent is WhoisGuard, Inc., WhoisGuard Protected, Panama / Marry Mae Cerna, Philippines.
2. The Domain Name and Registrar
The disputed domain name <onlyfansplus.online> (“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 February 3, 2021. On February 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 3, 2021, 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 February 4, 2021, 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 February 4, 2021.
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 February 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 26, 2021.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on March 3, 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 following facts are undisputed.
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 trademark registrations of trademarks incorporating the “OnlyFans” name, including, but not limited to the United Kingdom Intellectual Property Office “UKIPO”) Trade Mark (word mark) ONLYFANS, with registration No. 017912377, with a filing date of June 5, 2018, and with registration date January 9, 2019, for goods and services in classes 9, 35, 38, 41, and 42 (the “Trademark”).
The Domain Name was registered on December 9, 2020, and resolves to a website with a logo similar to that in use by the Complainant and on which a login form is presented where the “OnlyFans Username” has to filled in (“Website”). On the Website it is mentioned: “After connected to the server you can start get premium for you OnlyFans account”.
The Complainant has sent a cease-and-desist letter to the Respondent on January 4, 2021, by email, to which the Respondent did not respond.
5. Parties’ Contentions
Insofar as relevant for deciding this matter, the Complainant contends the following.
In addition to its registered trademark rights, the Complainant claims common law trademark rights in respect of the name “OnlyFans”. It cites in support of its claim to common law trademark 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.com>, which was registered on January 29, 2013, prior to the filing of any of the Complainant’s trademark applications.
In 2021, “www.onlyfans.com” is one of the most popular websites in the world. According to Alexa Internet, it is the 428th most popular website on the World Wide Web, and it is the 187th most popular website in the United States.
The Domain Name is identical or confusingly similar to the Complainant’s Trademark, now that the Domain Name consists of the Trademark. Further, that the additional term “plus” does nothing to confer legitimate rights or interest in the Domain Name to the Respondent. Also the use of the <.online> Top-Level Domain (“TLD”) does not change the confusing similarities between the Complainant’s Trademark and the Domain Name.
The Respondent has no rights or legitimate interests in the Domain Name. At the time of registration of the Domain Name, the Respondent was not known as “ONLYFANSPLUS”. Also, the Respondent is hiding its identity from the public behind a WhoIs privacy wall, which is often used for nefarious purposes such as cybersquatters.
The Domain Name is registered and is being used in bad faith. First, the Respondent’s use of a privacy service combined with a failure to submit a response to the prior cease-and-desist letter and to this Complaint is additional evidence of bad faith registration. Also, the Respondent was aware of the Complainant’s Trademark at the time of registration.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) the Domain Name 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.
A. Identical or Confusingly Similar
The Complainant must demonstrate that it has rights in a trademark or service mark and, if so, the Domain Name must be shown to be identical or confusingly similar to that mark.
It is not disputed that the Complainant has rights in the Trademark.
Furthermore, the Complainant has extensively substantiated that it is entitled to common law trademark rights for the purposes of the Policy and thus the Complainant has shown that its mark has become a distinctive identifier which consumers associate with the Complainant’s services in line with WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.3. This satisfies the Panel that the Complainant has established common law trademark rights for ONLYFANS for the purposes of the Policy.
As set out in WIPO Overview 3.0, section 1.7, the first element functions primarily as a standing requirement. The threshold test for confusing similarity between the Domain Name and the Trademark involves a relatively straightforward comparison.
The Domain Name comprises the Complainant’s Trademark ONLYFANS, the descriptive term, “plus”, and the “.online” TLD identifier.
The Panel finds that, 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, as set out in WIPO Overview 3.0, section 1.7. In this case, the Trademark is recognizable in the Domain Name, and the addition of other terms, in the current case the descriptive term “plus”, does not prevent the Panel’s finding of confusing similarity under the first element, as set out in WIPO Overview 3.0, section 1.8.
In light of the foregoing, the Panel finds that the Domain Name is confusingly similar to the Trademark.
Therefore, the Panel is satisfied that the first element of the Policy is met.
B. Rights or Legitimate Interests
The Respondent did not reply to the Complainant’s contentions.
The Panel has carefully considered the factual allegations that have been made by the Complainant and are supported by the submitted evidence.
Based on the record, there is no evidence of any of the circumstances set forth in paragraph 4(c) of the Policy, such as:
(i) use or preparation to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute; or
(ii) being commonly known by the Domain Name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or
(iii) making legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a material response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case and finds nothing from which the Panel might conclude the Respondent’s rights or legitimate interests in the Domain Name.
The Respondent does not appear to be affiliated with the Complainant in any way. There is no evidence that the Respondent is commonly known as “ONLYFANSPLUS”. There is also no evidence that the Respondent is, or has ever been, a licensee of the Complainant or that the Respondent has ever been permitted in any way by the Complainant to register or use the Trademark, or to apply for or use any domain name incorporating either of these.
Furthermore, the Respondent did not submit any evidence of demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods.
Moreover, the Respondent uses the Complainant’s logo on the Website and refers to the possibility to log in with the OnlyFans Username in order to obtain premium content. In the view of the Panel, the Respondent has intentionally suggested a connection with the Complainant and was therefore aware of the Complainant and the Complainant’s Trademark when registering the Domain Name.
Lacking a Response the Panel finds that the Respondent does not make any legitimate noncommercial of fair use of the Domain Name. The Panel takes into consideration that the Respondent most likely has registered the Domain Name for obtaining the credentials of the users of the Complainant’s services. The Panel also takes into consideration that the Respondent has been using a privacy shield and has not responded to a cease and desist letter, nor to the Complaint.
Therefore, the Panel concludes that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
The Panel refers to its findings under section 6.B of this decision and finds that the Domain Name was registered and is being used in bad faith.
In light of the evidence filed by the Complainant, the Panel finds that the Trademark is, as well as the activities of the Complainant, internationally well-known amongst the relevant public. Furthermore, the Domain Name was registered years after the Complainant acquired common law trademark rights for the Trademark. Accordingly, in the Panel’s view, the Respondent must have been aware of the Complainant’s existence and rights at the time of registering the Domain Name, which is a requisite for a finding of registration of the Domain Name in bad faith (see AB Gustaf Kähr v. Prasanth sp, inet, WIPO Case No. D2011-1455; Real Madrid Club De Futbol v. Michele Dinoia, WIPO Case No. D2010-0261; and, Advance Magazine Publishers Inc. v. Pablo Palermao, WIPO Case No. D2008-0026).
The Panel finds that the Respondent registered the Domain Name with knowledge of the Complainant’s Trademark and with intent to use the reputation of the Trademark to attract Internet users to visit its website for commercial gain, by creating a likelihood of confusion with the Complainant and its Trademark as to the source, affiliation or endorsement of its Domain Name and Website, with a highly similar look and feel as the website of the Complainant. 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. In accordance with section 3.1.4 of WIPO Overview 3.0, the facts of the case point to an intent on the part of the Respondent to unfairly profit from the Complainant’s rights and reputation in this regard.
Further, as also considered under paragraph 6.B, the Domain Name is used for illegal activities, in this case for possible phishing and scamming. In accordance with section 3.1.4 of WIPO Overview 3.0 these activities have to be considered as use in bad faith.
In addition to the above and in accordance with section 3.6 of WIPO Overview 3.0, the Panel states that the fact that the Respondent hid his/her identity from the public behind a WhoIs privacy wall, is additional evidence of a bad faith registration.
Based on the foregoing, 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.online> be transferred to the Complainant.
Willem J. H. Leppink
Date: March 15, 2021