WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fenix International Limited v. Kiril Kirilov
Case No. D2021-0853
1. The Parties
The Complainant is Fenix International Limited, United States of America (“United States”), represented by Walters Law Group, United States.
The Respondent is Kiril Kirilov, Ukraine.
2. The Domain Name and Registrar
The disputed domain name <upgradeonlyfans.com> (the “Domain Name”) is registered with Registrar of Domain Names REG.RU LLC (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2021. On March 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 24, 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 25, 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 30, 2021.
On March 25, 2021, the Center sent an email to the Parties in English and Russian regarding the language of the proceedings. On March 26, 2021, the Complainant reconfirmed its request that English be the language of the proceedings referring to provided respective arguments in support of its request. The Respondent did not provide any comments regarding the language of the proceedings.
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 in both English and Russian, and the proceedings commenced on April 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 3, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 5, 2021.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on May 17, 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
Fenix International Limited, the Complainant in the present proceedings, owns and operates a social media platform that allows users to post and subscribe to audiovisual content. The Complainant’s social media platform is located at the website “www.onlyfans.com”. According to Alexa Internet, it is the 428th most popular website in the world, and it is the 187th most popular website in the United States.
The Complainant is the owner of numerous ONLYFANS trademark registrations in Classes 9, 35, 38, 41, and 42, including but not limited to the United Kingdom trademark Nos. UK00917912377 and UK00917946559 registered on January 9, 2019; the European Union Trade Mark No. 017912377 and 017946559 registered on January 9, 2019; and United States trademark No. 5769267 and 5769268 registered on June 4, 2019.
Previous UDRP panels have recognized the Complainant’s unregistered common law rights in the ONLYFANS mark as having accrued and acquired distinctiveness by no later than May 30, 2017. See Fenix International Limited v. c/o who is privacy.com / Tulip Trading Company, Tulip Trading Company Limited, WIPO Case No. DCO2020-0038; Fenix International Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Samuel Walton, WIPO Case No. D2020-3131.
The Complainant registered its domain name <onlyfans.com> on January 29, 2013.
The Respondent registered the Domain Name on December 26, 2020.
The Complainant sent by email a cease-and-desist letter to the Respondent on February 12, 2021 demanding the Respondent stop using and transfer the Domain Name to the Complainant. The Respondent did not respond.
As of the date of this Decision, and according to the evidence submitted by the Complainant, the Domain Name resolves to a website offering for sale likes, subscribers, and comments on content posted to the Complainant’s services.
5. Parties’ Contentions
The Complainant requests that the Domain Name be transferred to the Complainant. According to the Complainant, each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case.
First, the Complainant submits that the Domain Name is identical or confusingly similar to the ONLYFANS trademark registrations of the Complainant.
Second, the Complainant argues that the Respondent has neither rights nor legitimate interests in the Domain Name.
Third, the Complainant submits that the Domain Name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements, which can be summarized as follows:
(i) the disputed 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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The requested remedy may only be granted if the above criteria are met.
At the outset, the Panel notes that the applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”. See section 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
A. Language of Proceedings
The language of the Registration Agreement for the Domain Name is Russian. Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Panel may also order that any documents submitted in a language other than that of the proceeding be translated.
However, as noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition (see, e.g., General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM, WIPO Case No. D2006-0334).
The Complainant has submitted a request that the language of the proceedings be English. The Complainant contends that the Respondent must be familiar with the English language since the Domain Name is composed of three English words: “upgrade”, “only”, and “fans”. The Complainant also notes that the Respondent conducts its business on the website connected to the Domain Name in English. The Complainant also believes that it will have to incur considerable expense if it is forced to submit the Complaint in Russian. Additionally, the translation process would cause an undue delay in the proceedings.
The Panel also finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Russian.
Taking all these circumstances into account, the Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English.
B. Identical or Confusingly Similar
The first element that the Complainant must establish is that the Domain Name is identical or confusingly similar to the Complainant’s trademark rights.
The Complainant holds several valid ONLYFANS trademark registrations, which precede the registration of the Domain Name.
The Domain Name incorporates the Complainant’s ONLYFANS trademark in its entirety. As numerous UDRP panels have held, incorporating a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696).
This Panel accepts that the addition of the term “upgrade” does not serve to distinguish the Domain Name from the Complainant’s trademark. UDRP panels have consistently held that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms, whether descriptive, geographical, pejorative, meaningless, or otherwise, would not prevent a finding of confusing similarity under the first element. See WIPO Overview 3.0, section 1.8.
The Top-Level Domain (“TLD”) in the Domain Name “.com” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. See WIPO Overview 3.0, section 1.11.1.
Given the above, the Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. Thus, the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the Domain Name.
The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(a) that it has made 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 prior to the dispute; or
(b) that it is commonly known by the domain name, even if it has not acquired any trademark rights; or
(c) that it intends to make a legitimate, noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
Although given the opportunity, the Respondent has not submitted any evidence indicating that any of the circumstances foreseen in paragraph 4(c) of the Policy are present in this case.
On the contrary, it results from the evidence in the record that there are the Complainant’s ONLYFANS trademark registrations, which predate the Respondent’s registration of the Domain Name. There is no evidence in the case that the Complainant has licensed or otherwise permitted the Respondent to use the ONLYFANS trademark or to register the Domain Name incorporating this trademark. There is also no evidence to suggest that the Respondent has been commonly known by the Domain Name.
Moreover, it results from the evidence in the record that the Respondent does not make use of the Domain Name in connection with a bona fide offering of goods or services, as well as it does not make a legitimate, noncommercial or fair use of the Domain Name without intent for commercial gain.
The Panel notes that the Respondent uses the Domain Name to offer Internet users the opportunity to purchase engagements on the Complainant’s social media services such as likes, subscribers, and comments for profiles, which constitutes a violation of the Complainant’s Terms of Service. It is more probable than not that the Respondent’s business involves fraudulent operations and damages the reputation of the Complainant. Thus, such use of the Domain Name does not qualify as a legitimate noncommercial or fair use.
Furthermore, the Panel finds that the Domain Name suggests an affiliation with the Complainant and its ONLYFANS trademark, as the Domain Name wholly reproduces the Complainant’s trademark in entirety with the additional term “upgrade”. Fundamentally, the Respondent’s use of the Domain Name will not be considered “fair” if it falsely suggests affiliation with the Complainant as a trademark owner. See WIPO Overview 3.0, section 2.5.
Given the above, the Respondent has failed to invoke any circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the Domain Name. Thus, there is no evidence in the case file that refutes the Complainant’s submissions. The Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The third requirement the Complainant must prove is that the Domain Name has been registered and is being used in bad faith.
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:
(i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the domain name were registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct; or
(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the domain name has intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.
As indicated above, the Complainant’s rights in the ONLYFANS trademark predate the registration of the Domain Name. This Panel finds that the Respondent was or should have been aware of the Complainant’s trademark at the time of registration of the Domain Name. This finding is supported by the type of services offered through the Domain Name. Also, the Panel finds that the Complainant’s ONLYFANS trademark is well-known. Thus, the Respondent could not reasonably ignore the reputation of the services this trademark identifies. The Respondent in all likelihood registered the Domain Name with the expectation of taking advantage of the reputation of the Complainant’s trademark.
Moreover, the Domain Name is being used in bad faith by the Respondent to redirect Internet users to its website offering likes, subscribers, and comments for profile on the Complainant’s social media services. Such use of the Domain Name is likely to involve fraudulent operations and destroys the authenticity of the user experience provided by the Complainant’s social platform.
In addition, the Respondent did not reply to the cease-and-desist letter sent by the Complainant. All these circumstances constitute further evidence of bad faith.
For the reasons discussed above, the Panel finds that the Complainant has proved the requirements 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 disputed domain name <upgradeonlyfans.com> be transferred to the Complainant.
Date: May 27, 2021