WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fenix International Limited v. Danesco Trading Ltd. / Mikasantik Dikalov

Case No. D2021-0593

1. The Parties

The Complainant is Fenix International Limited, c/o Walters Law Group, United States of America (“United States”).

The Respondent is Danesco Trading Ltd., Cyprus / Mikasantik Dikalov, Ukraine.

2. The Domain Name and Registrar

The disputed domain name <onlyfansmanyvidsvip.com> (“the Disputed Domain Name”) is registered with Danesco Trading Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 24, 2021. On February 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 2, 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 March 3, 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 March 3, 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 March 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 25, 2021.

On March 10, 2021, the Respondent submitted some informal emails in Russian, contending that it received the Notification of Complaint and may delete the Disputed Domain Name if some rules were violated. In addition, the Respondent also stated that it did not understand the matter and expected to receive more details.

On the same day, the Center informed the Parties that if they wish to explore settlement options, the Complainant should submit a request for suspension by March 17, 2021. The Complainant submitted the request for suspension on March 11, 2021. Accordingly, on March 12, 2021, the Center notified the Parties that the proceeding will be suspended until April 11, 2021. On April 12, 2021, having not heard from the Parties as to a successful settlement, the Center notified the Parties that the proceeding is reinstituted and the Center will proceed to panel appointment.

The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on April 20, 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, Fenix International Limited, owns and operates a social media platform whereby users can pay to upload their own contents and view other’s contents including physical fitness, music, and adult entertainment. In 2021, the Complainant’s website “www.onlyfans.com” was ranked the 428th most popular website in the world, and the 187th most popular website in the United States, according to Alexa Internet.

The Complainant’s trademarks ONLYFANS have been registered for goods and services in Classes 09, 35, 38, 41, and 42 in a variety of countries under a number of trademark registrations, including but not limited to the United Kingdom trademark Nos. UK00917912377 and UK00917946559 registered on January 9, 2019; the European Union trademark Nos. 017912377 and 017946559 registered on January 9, 2019; and, United States Trademark Nos. 5769267 and 5769268 registered on June 4, 2019.

According to what the Complainant submitted, the ONLYFANS trademark was first used upon registration of the domain name <onlyfans.com> on January 29, 2013, and the Complainant also has extensive common law rights in the trademark that commenced by, at latest, July 4, 2016.

The Disputed Domain Name <onlyfansmanyvidsvip.com> was created on December 18, 2020. As of the date of this Decision, the Disputed Domain Name is resolving to a website containing adult videos under the supposed brand “OnlyFans ManyVids”.

The Complainant sent a ceaseanddesist letter to the Respondent on January 25, 2021, requesting for a transfer of the Disputed Domain Name. However, the Respondent did not respond to the demand letter.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:

(i) The Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights.

Firstly, the Complainant contends that the Complainant is the registered owner of trademark registrations for ONLYFANS in numerous countries. Besides, the Complainant claims its unregistered common law rights through its extensive use of “ONLYFANS” mark via the website “www.onlyfans.com”, which was recognized in previous UDRP decisions.

Second, the Complainant asserts that the Disputed Domain Name is confusingly similar to the ONLYFANS Trademarks owned by the Complainant since the Disputed Domain Name incorporates the Complainant’s trademark ONLYFANS in its entirety, and the addition of the element “manyvids” refering to another adult entertainment brand and the generic term “vip”, a common abbreviation meaning “very important person”, could not dispel any likelihood of confusion.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

The Complainant submits that the elements set forth in Policy, paragraph 4(c) are not fulfilled.

First, the Complainant contends that the Respondent will be unable to provide credible evidence that it has rights or legitimate interests in the Disputed Domain Name since the associated website is a site that hosts adult entertainment content in direct competition with the Complainant’s services, including videos pirated from one of the Complainant’s direct competitors <manyvids.com> and over 350 videos pirated directly from the Complainant’s own users.

Second, the Complainant submits that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. In addition, there is not any evidence indicating that the Respondent is commonly known by the Disputed Domain Name.

(iii) The Disputed Domain Name was registered and is being used in bad faith.

First, the Complainant argues that the Respondent has already been aware of the Complaint’s mark when registering the Disputed Domain Name since: (i) the Complainant had widely used the “ONLYFANS” trademark for more than four years before the registration of the Disputed Domain Name; (ii) the Disputed Domain Name is a combination of two brand names, i.e., the “ONLYFANS” and “MANYVIDS” marks, of unrelated companies that offer the same or similar services; and (iii) the Respondent registered the confusingly similar Disputed Domain Name to offer services in direct competition with the Complainant. Further, even if the Respondent argues that it did not have actual knowledge of the trademark at the time of its registration of the Disputed Domain Name, constructive knowledge of a trademark is also applied in UDRP proceedings.

Second, the Complainant submits that the Respondent took deliberate steps to conceal its true identity because the Respondent used the privacy service to shield identity when registering the Disputed Domain Name and did not respond to the Complainant’s warning email dated January 25, 2021.

Third, the Complainant argues that the website under the Disputed Domain Name offers pirated copies of content of the Complainant’s users and direct competitors to divert Internet traffic away from services provided by the Complainant and to intentionally seek to profit from the confusion.

With the said arguments, the Complainant requests that the Disputed Domain Name be transferred to the Complainant.

B. Respondent

6. Discussion and Findings

A. Procedural Issues

(i) Respondent’s Identity

The Panel notes that at the time the Complaint was filed on February 24, 2021, the Respondent was identified as “Danesco Trading Ltd”. On March 3, 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 March 3, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.

On March 3, 2021, the Complainant filed an amendment to the Complaint, adding the respondent named in the beginning of the Complaint as the underlying registrant.

(ii) The Respondent’s Failure to Respond

Informal emails by the Respondents are not considered proper responses. Nonetheless, the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant (see, e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413 and M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941). However, the Panel may draw appropriate inferences from the Respondent’s default.

B. Identical or Confusingly Similar

The Complainant is required to establish the two following elements: (i) that it has trademark rights, and, if so, (ii) that The Disputed Domain Name is identical or confusingly similar to its trademark.

First, the Panel finds that the Complainant has evidenced that it has trademark rights in and to the trademarks ONLYFANS, which were registered in a number of countries before the registration of the Disputed Domain Name. In addition, it is evidenced that the Complainant has widely used the ONLYFANS trademarks for services via a social media platform whereby users can upload their own contents and view other’s contents including physical fitness, music, and pornographic entertainment.

Second, the Disputed Domain Name comprises the Complainant's ONLYFANS trademark, in which the Complainant has exclusive rights. The difference between the Disputed Domain Name and the trademark is the addition of the suffix elements “manyvids” and “vip”.

Regarding the element “manyvids”, the Panel conducted an independent search and found that “ManyVids” is the trademark of another party, which is known for pornographic content (see“https://en.wikipedia.org/wiki/ManyVids”). It is well established that the addition of other third-party marks is insufficient in itself to avoid a finding of confusing similarity to the Complainant’s mark since the Complainant’s registered mark is still recognizable within the Disputed Domain Name under the first element of the UDRP (see section 1.12 of the WIPO Overview 3.0). This is also similar to previous UDRP panels’ decisions (see Aldi GmbH & Co. KG, Aldi Stores Limited v. Ronan Barrett, WIPO Case No. D2016-2219).

Regarding the element “vip”, the Panel finds that such word is a common abbreviation of “very important person” (see “https://dictionary.cambridge.org/vi/dictionary/english/vip?q=VIP”). It is well established that the addition of an additional term (in this case, “VIP”) to a trademark does not prevent confusing similarity. Thus, in the Panel’s view, the addition of the word “VIP” does nothing to dispel confusing similarity, as it was found in previous UDRP decisions (see, e.g., Philip Morris Products S.A. v. Halil Cakir, WIPO Case No. D2018-1656; Continental Exchange Solutions Inc. DBA Ria Financial v. Red Soul, WIPO Case No. D2013-1690; SAP AG v. Subba Rao Parvathaneni, WIPO Case No. D2010-1813).

Finally, the Panel finds, similarly to other UDRP panels, that the addition of the generic Top-Level Domain (“gTLD”) “.com” to the Disputed Domain Name does not constitute an element as to avoid confusing similarity for the Policy purposes (see, e.g., Volkswagen AG v. Privacy Protection Services, WIPO Case No. D2012 2066; The Coca-Cola Company v. David Jurkiewicz, WIPO Case No. DME2010-0008; Telecom Personal, S.A., v. NAMEZERO.COM, Inc., WIPO Case No. D2001-0015; F. Hoffmann La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

Based on the foregoing findings, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant's ONLYFANS trademarks, and paragraph 4(a)(i) of the Policy is established.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy, including:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a 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 Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The consensus of previous UDRP decisions is that while the overall burden of proof in UDRP proceedings is on the Complainant, once a prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating his rights or legitimate interests in the Disputed Domain Name (see e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Julian Barnes v. Old Barn Studios Limited, WIPO Case No. D2001-0121).

In this instant case, the Panel finds that the Respondent has failed to meet that burden since no Response was submitted, while the Complainant has presented evidence to the Panel that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

Regarding paragraph 4(c)(i) of the Policy, the Panel finds, in light of the Complainant’s asserted facts, that no license, permission, or authorization of any kind to use the Complainant’s trademark has been granted to the Respondent. There is no evidence available that the Respondent holds any registered or unregistered trademark rights in any jurisdiction. Thus, the Panel finds that the Respondent has no rights in the trademark ONLYFANS.

The Panel finds that the Disputed Domain Name comprises the ONLYFANS trademark in its entirety, and the website under this Disputed Domain Name displays the sign “OnlyFans”, which is confusingly similar to the Complainant’s trademarks, while no statement or disclaimer disclosing accurately the relationship between the Complainant and the Respondent is placed. In addition, since the website “www.onlyfansmanyvidsvip.com” provides many pornographic videos under titles containing the ONLYFANS trademarks of the Complainant, such website directly competes with the Complainant’s services. Therefore, the Panel finds that by using the Disputed Domain Name in such a manner, the Respondent is attempting to ride on the reputation of the ONLYFANS trademark, and thus, such use does not constitute a bona fide use within paragraph 4(c)(i) of the Policy.

Regarding paragraph 4(c)(ii) of the Policy, the Panel finds that there is no evidence showing that the Respondent has been commonly known by the Disputed Domain Name. Further, there is also no evidence showing that the Respondent operates any bona fide business or organization under the Disputed Domain Name. Therefore, it is not evidenced that the Respondent is identified by “onlyfansmanyvidsvip” or that the Respondent has any right in it.

Regarding paragraph 4(c)(iii) of the Policy, the Panel finds that there is no evidence that the Respondent is making any noncommercial or fair use of the Disputed Domain Name.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, and the second element under paragraph 4(a)(ii) of the Policy is established.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four circumstances that, without limitation, shall be evidence of the registration and use of a domain name in bad faith:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The above four circumstances are not exhaustive and bad faith may be found by the Panel alternatively.

The Panel finds that the Complainant has put forth evidence that the Respondent has registered and used the Disputed Domain Name in bad faith. The Respondent did not reply to the Complainant’s contentions and, therefore, has not refuted the Complainant’s contentions.

The Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registrations of the Disputed Domain Name. In this regard, the Panel finds that the Complainant’s ONLYFANS trademarks have been registered in a variety of jurisdictions around the world. In addition, the Complainant’s ONLYFANS trademarks have been put in use for a period of time and gained certain reputation in the social platform and adult entertainment content as well. The Complainant’s ONLYFANS trademarks and its domain name <onlyfans.com> all predate the registration of the Disputed Domain Name.

The Disputed Domain Name in fact combines the Complainant’s ONLYFANS trademark and MANYVIDS mark of Complainant’s direct competitor. Given the extensive use of the ONLYFANS trademark for pornographic entertainment by the Complainant, and in consideration of the use of the Disputed Domain Name and the contents of the website thereunder, the Panel is of the view that the Respondent obviously knew of the Complainant and its ONLYFANS trademarks when it registered the Disputed Domain Name, and the Panel considers the registration an attempt by the Respondent as to take advantage of the Complainant’s goodwill.

On the date of this Decision, the Panel accesses the Disputed Domain Name and finds that it is resolving to a website offering the pornographic contents branded with the Complainant’s trademark ONLYFANS. The Panel takes the view that any Internet users seeking to view contents of the Complainant’s users under the ONLYFANS trademarks would very likely mistakenly believe that the Respondent is either connected to or associated with the Complainant, while no such connection exists in fact. Such misleading behavior is indicative of bad faith within the meaning of paragraph 4(b)(iv) of the Policy, on the part of the Respondent.

Taking into account all of the above and the available record, the Panel finds that the Disputed Domain Name was registered and used by the Respondent in bad faith and the third element under paragraph 4(a)(iii) of the Policy is established.

7. Decision

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 <onlyfansmanyvidsvip.com> be transferred to the Complainant.

Pham Nghiem Xuan Bac
Sole Panelist
Date: April 29, 2021