WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fenix International Limited v. WhoisGuard Protected, WhoisGuard Inc. / henry chandler
Case No. D2021-0340
1. The Parties
Complainant is Fenix International Limited c/o Walters Law Group, United States of America (“United States”).
Respondent is WhoisGuard Protected, WhoisGuard Inc. Panama / henry chandler, United States.
2. The Domain Name and Registrar
The disputed domain name <onlyfansgo.com> (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 February 3, 2021. On February 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 4, 2021, 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 and contact information in the Complaint. The Center sent an email communication to Complainant on February 5, 2021 providing the registrant and contact information disclosed by the Registrar and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on February 5, 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 Respondent of the Complaint, and the proceedings commenced on February 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 28, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 8, 2021.
The Center appointed Colin T. O'Brien as the sole panelist in this matter on March 12, 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
Complainant owns and operates the website located at the domain name <onlyfans.com> in connection with the provision of a social media platform that allows users to post and subscribe to audiovisual content.
Complainant owns a United States Trademark Registration for ONLYFANS, No. 5,769,267, registered on June 4, 2019 for “arranging subscriptions of the online publications of others” and ONLYFANS.COM, No. 5,769,268, registered on June 4, 2019 for “arranging subscriptions of the online publications of others” (collectively “Complainant’s Marks”).
Complainant registered the <onlyfans.com> domain name on January 29, 2013. According to the Complaint, Complainant’s domain name <onlyfans.com> is the 428th most popular website globally and it is the 187th most popular website in the United States.
The Disputed Domain Name was registered on December 9, 2020. The Disputed Domain Name resolves to a website that displays the Complainant’s Marks and offers Internet users an unauthorized mobile application to access Complainant’s services for apparent phishing purposes.
5. Parties’ Contentions
Respondent’s Disputed Domain Name is identical or confusingly similar to Complainant’s Mark because the additional term “go” does nothing to confer legitimate rights or interests in the Disputed Domain Name to Respondent.
Respondent has no rights or legitimate interests in the Disputed Domain Name because the home page at the Disputed Domain Name uses Complainant’s word and design Marks and falsely alleges to offer users a counterfeit mobile application to access Complainant’s services. It does not appear that any user is actually able to download the counterfeit mobile application, but the offering is a scam to deceive users into completing two tasks and providing their personal information in an apparent phishing attempt.
Respondent has no rights or legitimate interests in the Disputed Domain Name. No evidence indicates that Respondent is known by the Disputed Domain Name nor a name corresponding to the Disputed Domain Name. Respondent registered and used the Disputed Domain Name not because it refers to or is associated with Respondent, but because the Disputed Domain Name is identical or confusingly similar to the <onlyfans.com> domain name and Complainant’s Marks.
The Disputed Domain Name was registered on December 9, 2020, at that time Complainant’s Marks had been used for about four years. Complainant’s Marks had acquired distinctiveness by the time respondent registered the Disputed Domain Name. Respondent used the Disputed Domain Name to offer services that were identical to Complainant’s own, including a counterfeit application to access Complainant’s services. Inviting Internet users to fraudulently access paywall protected content is evidence of bad faith. The website at the Disputed Domain Name shows Respondent’s unlicensed use of Complainant’s Marks increases the likelihood of confusion to users.
Complainant sent a cease-and-desist letter to Respondent on January 11, 2021, by email, demanding Respondent stop using and transfer the Disputed Domain Name to Complainant. Respondent did not respond, thus necessitating the filing of this Complaint.
Respondent’s lack of rights or legitimate interests in the Disputed Domain Name leads to the inevitable conclusion that there is no plausible circumstance under which Respondent could legitimately register or use the Disputed Domain Name and that it was registered and is being used by Respondent in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant has demonstrated it owns registered trademark rights in the ONLYFANS and ONLYFANS.COM marks, and has shown that no other entity has rights in or uses Complainant’s Marks. The addition of “go” does not prevent a finding of confusing similarity. The addition of a term (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8, and Hoffmann-La Roche AG v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org / Conan Corrigan, WIPO Case No. D2015-2316.
Accordingly, the Disputed Domain Name is confusingly similar to a mark in which Complainant has rights.
B. Rights or Legitimate Interests
Complainant has presented a prima facie case that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; has not at any time been generally known by the Disputed Domain Name; and, is not making a legitimate noncommercial of fair use of the Disputed Domain Name, rather Respondent used the Disputed Domain Name to offer services that were identical to Complainant’s own, including a counterfeit application to access Complainant’s services.
After a complainant has made a prima facie case, the burden of production shifts to the respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
Here, Respondent has provided no evidence of any right or legitimate interest in the Disputed Domain Name.
Furthermore, the nature of the Disputed Domain Name, comprising Complainant’s trademark in its entirety in combination with the additional term “go”, carries a risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1.
In the absence of any evidence indicating a legitimate reason for registering the Disputed Domain Name, the Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Disputed Domain Name was registered after Complainant first registered and used its ONLYFANS Marks. While Complainant is a relatively new company it has achieved global fame and success in a short time. Given the evidence provided by Complainant it is clear Respondent knew of Complainant’s Marks and knew that it had no rights or legitimate interests in the Disputed Domain Name. Upon the evidence before the Panel, there is no benign reason for Respondent to have registered the Disputed Domain Name, comprising Complainant’s trademark in its entirety and being used for deceptive purposes.
Further, the use of the Disputed Domain Name by Respondent is in bad faith. Paragraph 4(b)(iv) states that evidence of bad faith may include a respondent’s use of a domain name to intentionally attempt to attract Internet users, for commercial gain. Complainant has also submitted evidence that Respondent has used the Disputed Domain Name to create a website, which is used as part of a phishing scheme in order to take Internet users money and personal information. This is clearly indicative of bad faith on the part of Respondent.
In the absence of any evidence or explanation from Respondent, the Panel finds that Complainant has satisfied paragraph 4(a)(iii) 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 Disputed Domain Name <onlyfansgo.com> be transferred to Complainant.
Colin T. O'Brien
Date: March 26, 2021