WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fenix International Limited c/o Walters Law Group v. WhoisGuard, Inc. / Arsen Kadyrov
Case No. D2021-0352
1. The Parties
The Complainant is Fenix International Limited c/o Walters Law Group, United States of America (“United States” or “U.S.”), represented by Walters Law Group, United States.
The Respondent is WhoisGuard, Inc., Panama, / Arsen Kadyrov, Kazakhstan.
2. The Domain Name and Registrar
The disputed domain name <getonlyfanslikes.com> 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 4, 2021. On February 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 5, 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 the Complainant on February 8, 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 10, 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 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 9, 2021. The Respondent sent an informal Response on February 20, 2021. The Center sent a possible settlement email to all the Parties on February 22, 2021. The Complainant confirmed on February 26, 2021, that they did not wish to suspend the proceeding. The Center sent Commencement of Panel Appointment Process on March 10, 2021.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on March 15, 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 the website located at the domain name <onlyfans.com>. It has used the domain name for several years in connection with the provision of a social media platform that allows users to post and subscribe to audiovisual content on the Internet.
At Annex D to the Complaint, the Complainant exhibits the capture of their homepage <onlyfans.com>. As of 2021 <onlyfans.com> is one of the most popular websites in the world. This is evidenced by the Alexa Internet Summary from January 13, 2021, and exhibited at Annex F to the Complaint. The summary shows that <onlyfans.com> is the 428th most popular website on the Internet and the 187th most popular website in the U.S.
The Complainant points out that since it is one of the most visited websites in the world, it has become a prime target for cybersquatters wishing to profit from the Complainant’s reputation and mark.
The Complainant relies upon a number of trade mark registrations for ONLYFANS evidence of which is exhibited at Annex E to the Complaint. These are;
i. U.S. registration No.5769267 for ONLYFANS in class 35 registered on June 4, 2019.
ii. U.S. registration No. 5769268 for ONLYFANS.COM in class 35 registered on June 4, 2019.
iii. European Union trade mark registration No. 017912377 for ONLYFANS in classes 9, 35, 38, 41, and 42 filed on June 5, 2018, and registered on January 9, 2019.
These trade mark registrations predate the date of registration of the disputed domain name on December 17, 2020.
The Complainant also relies upon common law rights in the mark ONLYFANS. It registered the domain name <onlyfans.com> on January 29, 2013, and has used ONLYFANS since, at the latest, July 4, 2016.
The Complainant refers to a number of earlier UDRP panel decisions in which it was the Complainant, in particular Fenix International Limited v c/o whois privacy.com /Tulip Trading Company, Tulip Trading Company Limited, WIPO Case No.DCO2020-0038, which support the contention that its common law rights have been recognized as having accrued and acquired distinctiveness by no later than May 30, 2017.
The Center received an email dated February 20, 2021 from a so-called “K. Bush”, purportedly on behalf of the Respondent, which stated; “The disputed domain name should be cancelled”.
However, no substantive Response has been filed.
In the absence of a full Response the Panel finds the above evidence adduced by the Complainant to be true.
5. Parties’ Contentions
The Complainant submits;
i. The Complainant has registered and unregistered rights in the mark ONLYFANS, which predate the registration of the disputed domain name. The disputed domain name is confusingly similar to the mark ONLYFANS.
ii. On the Complainant’s evidence the Respondent has no rights or legitimate interests in the disputed domain name.
iii. On the Complainant’s evidence the Respondent registered and used the disputed domain name in bad faith.
The Respondent’s contention contained in the email of February 20, 2021, referred to above, indicates that the Respondent or someone acting on their behalf is apparently agreeable to the disputed domain name being cancelled.
6. Discussion and Findings
A. Identical or Confusingly Similar
On the basis of the Complainant’s evidence set out in section 4 above the Panel finds that the Complainant has both registered and unregistered trade mark rights in the mark ONLYFANS.
The disputed domain name consists of the word “onlyfans” with the addition of the words, “get” and “likes”. The Panel agrees with the submission by the Complainant, that the addition of these two words does not serve to distinguish the disputed domain name from the mark ONLYFANS (section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s mark ONLYFANS, within Paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
It is well-established that once the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name the burden of production then shifts to the Respondent to provide evidence that it has rights to, or legitimate interest in, the disputed domain name in issue.
In this case, the evidence adduced by the Complainant of the Respondent’s use of the domain name is set out in Annex G to the Complaint. This consists of the home page accessed by the disputed domain name whereby the Internet user is offered for sale likes and comments on content similar to the Complainant’s services.
The Internet user is invited to;
“Boost your onlyfans account with thousands of new subscribers and likes for rapid growth and better credibility of your onlyfans account”.
The Complainant submits that the Respondent is selling counterfeit or fraudulent services that do not actually result in likes, comments or other user activity and that the purported sales would constitute a violation of the Complainant’s Terms of Service, which unlawfully interferes with the Complainant’s contractual rights.
The Complainant relies upon section 2.13.1 of the WIPO Overview 3.0 to the effect that the use of a domain name for illegal activity can never confer rights or legitimate interest. On the basis of the submissions by the Complaint the Respondent cannot argue that it is making a legitimate, noncommercial or fair use of the disputed domain name. It follows that the Respondent’s use of the disputed domain name does not qualify as a legitimate noncommercial or fair use
The Complainant also submits that there is no evidence that the Respondent is commonly known by reference to the disputed domain name. This is particularly so where the Respondent is concealing its identity from the public behind a WhoIs privacy wall.
Having considered the Complainant’s contentions and in the absence of a substantive Response the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name within Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant submits that at the date of registration of the disputed domain name the Respondent would have had constructive, if not actual knowledge of the Complainant’s mark ONLYFANS. On the evidence set out above the Complainant had been using its mark for more than four years. The Complainant’s services were also among most popular websites in the world.
The Panel takes into account the evidence of the use being made of the disputed domain name. It is apparent, as is pointed out by the Complainant, that the Respondent registered the domain name in an attempt to entice users to breach the Complainant’s Terms of Service by purchasing likes, comments and other user activities.
In the absence of a rebuttal of these submissions in a full Response the Panel finds that the disputed domain name was registered in bad faith.
In establishing bad faith use, the Complainant relies upon the fact that use of a domain name for illegal activity is manifestly considered as evidence of bad faith as set out at WIPO Overview 3.0, section 3.1.4. In this case, the Respondent is using the disputed domain name to offer for sale “likes” and comments on content posted to Complainant’s service in breach of the Complainant’s Terms of Service. This has the consequence of destroying the authenticity of the user experience provided by the Complainant’s services.
The Complainant cites an earlier UDRP panel decision, Instagram LLC v Registration Private, Domains By Proxy LLC / Yan Jiang and Whois Domain Admin /Li Dan, WIPO Case No. D2020-2092, as support for this proposition, where the UDRP panel found bad faith use where the respondent in that case sold likes and followers to the complainant’s social media services.
The Complainant also relies upon the fact that the Respondent failed to respond to a cease and desist letter sent by the Complainant’s lawyers on January 11, 2021, a copy of which is exhibited as Annex H to the Complaint, and in which the Complainant requested the Respondent should stop using and transfer the domain name. The Panel follows earlier UDRP decisions and finds that a failure to respond to such a letter can be prima facie evidence of bad faith.
The Complainant points out that the Respondent is hiding its identity behind a WhoIs privacy wall. It is well-established that that, too, can be prima facie evidence of bad faith.
Having considered the Complainant’s submissions and in the absence of a full Response, the Panel accepts the Complainant’s submission that on the evidence there is no plausible circumstance under which the Respondent could legitimately register or use the disputed domain name. Consequently the Panel finds that the disputed domain name was registered and used by the Respondent in bad faith within 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, <getonlyfanslikes.com> be transferred to the Complainant.
Clive Duncan Thorne
Date: March 29, 2021