WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fenix International Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Gary Brown
Case No. D2021-0830
1. The Parties
The Complainant is Fenix International Limited c/o Walters Law Group, United States of America (“United States”).
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Gary Brown, United States.
2. The Domain Name and Registrar
The disputed domain name <onlyfanslegendxxx.com> (the “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 March 19, 2021. On March 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 22, 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 March 24, 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 24, 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 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 21, 2021.
The Center appointed Nicholas Smith as the sole panelist in this matter on April 28, 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 is a company that since 2013 has operated a website at “www.onlyfans.com” (“Complainant’s Website”). The Complainant’s Website hosts a social media platform that allows users to upload content to the platform and receive revenue from users who subscribe to that content. The Complainant’s Website is the 428th most popular website on the Internet and is used by a variety of professionals including professionals in the adult entertainment industry.
The Complainant is the owner of trademark registrations for marks consisting of the word ONLYFANS (the “ONLYFANS Mark”) in various jurisdictions including a United States registration from June 4, 2019 (registration number 5769267) for services (“Arranging subscriptions of the online publications of others”) in class 35. The ONLYFANS Mark has been used in trade since 2016 and has also been registered in the European Union.
The Domain Name <onlyfanslegendxxx.com> was registered on January 21, 2021 and is presently inactive. Prior to the commencement of the proceeding the Domain Name resolved to a website (“Respondent’s Website”) that hosted adult entertainment content, which was in direct competition with a portion of the services offered by the Complainant’s users on the Complainant’s Website.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s ONLYFANS Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the ONLYFANS Mark, having registered the ONLYFANS Mark in the United States and other jurisdictions. The Domain Name is confusingly similar to the ONLYFANS Mark since it wholly incorporates the ONLYFANS Mark along with the additional terms “legend” and “xxx”.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known by the Domain Name nor does the Respondent have any authorization from the Complainant to register the Domain Name. The Respondent is not making a legitimate noncommercial or fair use of the Domain Name. Rather the Respondent is using the Domain Name to resolve to a website hosting adult entertainment content in direct competition with Complainant’s services. Such use is not a bona fide offering of services.
The Domain Name was registered and is being used in bad faith. By using the Domain Name to resolve to a website that advertises competing services, the Respondent is using the Domain Name to divert Internet users searching for the Complainant to that website for commercial gain. Such conduct amounts to registration and use of the Domain Name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the ONLYFANS Mark, having registered the ONLYFANS Mark as a trademark in various jurisdictions including the United States.
The Domain Name incorporates the ONLYFANS Mark in its entirety with the addition of the terms “legend” and “xxx”. The addition of a dictionary term (or terms) to a complainant’s mark does not prevent a finding of confusing similarity, see Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056. The Panel finds that the Domain Name is confusingly similar to the Complainant’s ONLYFANS Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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 Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the ONLYFANS Mark or a mark similar to the ONLYFANS Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name.
There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services. The Respondent’s use of the confusingly similar Domain Name for a website offering adult entertainment services in direct competition with the services offered by the Complainant and its users does not amount to use for a bona fide offering of goods and services. Nor does its present inactive use of the Domain Name.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Name under the Policy. In the absence of such a Response, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or has 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 the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on the respondent’s website or location (paragraph 4(b) of the Policy).
The Panel finds that the Respondent must have been aware of the Complainant and its reputation in the ONLYFANS Mark at the time the Respondent acquired the Domain Name. At the date of registration ONLYFANS Mark had been in use for a number of years and had acquired a considerable reputation, not least in the adult entertainment industry. The Respondent has provided no explanation, and none is immediately obvious, why an entity would register a domain name incorporating the ONLYFANS Mark and redirect it to a website containing adult entertainment videos similar to a portion of the services offered by users of the Complainant’s Website unless there was an awareness of and an intention to create a likelihood of confusion with the Complainant and its ONLYFANS Mark. In these circumstances, the Respondent’s conduct in registering the Domain Name when it was aware of the Complainant’s rights and lacked rights or legitimate interests of its own amounts to registration in bad faith.
The Respondent’s Website offered adult entertainment video services in direct competition with the Complainant. In these circumstances where the Respondent has offered no plausible explanation for the registration of the Domain Name the Panel finds that that the Respondent has used the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the ONLYFANS Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website. As such the Panel finds that the Domain Name is being used in bad faith.
Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under 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 Domain Name <onlyfanslegendxxx.com> be transferred to the Complainant.
Date: May 5, 2021