WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fenix International Limited v. Private Whois, Knock Knock WHOIS Not There, LLC / Alberto Sainz

Case No. D2021-0864

1. The Parties

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

Respondent is Private Whois, Knock Knock WHOIS Not There, LLC, United States / Alberto Sainz, United States.

2. The Domain Names and Registrar

The disputed domain names <cubaonlyfans.com> and <onlyfanscuba.com> are registered with Automattic Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed 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 disputed domain names. On March 24, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 26, 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 March 26, 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 April 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 11, 2021. Respondent did not submit any response. Accordingly, the Center notified the Parties of Respondent’s default on May 19, 2021.

The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on May 25, 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 is a British-based company, which operates an international social media platform at the website “www.onlyfans.com”, through which users post and subscribe to audiovisual content online. Complainant is the proprietor of several trademarks for its ONLYFANS marks, including the following:

- European Union Trade Mark No. 017912377 for ONLYFANS (word mark), registered on January 9, 2019, for services in class 35;
- United Kingdom Trademark No. UK00917946559 for ONLYFANS (device mark), registered on January 9, 2019, for goods and services in classes 9, 35, 38, 41, and 42;
- United States Trademark No. 5769267 for ONLYFANS (word mark), registered on June 4, 2019, for services in class 35, claiming a date of first use of July 5, 2016;
- United States Trademark No. 6253475 for ONLYFANS.COM (word mark), registered on January 26, 2021, for goods and services in classes 9, 35, 38, 41, and 42.

Respondent registered the disputed domain names on February 7, 2021. The disputed domain name <cubaonlyfans.com> redirects to the disputed domain name <onlyfanscuba.com>, which resolves to a website inviting Internet users to create accounts and to log in to access services that appear identical to those offered by Complainant. The website is in Spanish language.

The record contains a copy of Complainant’s cease-and-desist letter to Respondent dated February 26, 2021. There is no record of Respondent’s reply.

5. Parties’ Contentions

A. Complainant

Complainant’s contentions may be summarized as follows:

Complainant requests consolidation of the proceedings against the two domains for the following reasons. First, both disputed domain names were registered on the same day, using the same registrar and privacy service. The domain name <cubaonlyfans.com> redirects to <onlyfanscuba.com>. Respondent appears to be the same party.

Under the first element, Complainant states that it owns several trademark registrations for the ONLYFANS mark. It has established common law rights through its 2013 registration of the <onlyfans.com> domain name and use of said domain name dating to July 4, 2016. Said rights have been acknowledged by previous UDRP panels. In 2021, Complainant’s website “www.onlyfans.com” was ranked as the 428th most popular websites in the world and the 187th most popular in the United States. Complainant’s rights predate the registration of the disputed domain names. The disputed domain names contain and are confusingly similar to Complainant’s ONLYFANS mark.

Under the second element, Complainant states that Respondent has registered and is using the disputed domain names for illegal activity. Respondent’s website is a copycat of Complainant’s website and offers competing services.

Under the third element, Complainant states that, by the time that Respondent had registered the disputed domain names, Complainant’s ONLYFANS mark had acquired distinctiveness, as previous UDRP panels have acknowledged. Respondent used the disputed domain names to offer services identical to Complainant’s, using a log-in form and other content reproduced from Complainant’s website, including Complainant’s word and design marks. Constructive knowledge, at a minimum, could be inferred. Respondent shielded its identity with a privacy service. Respondent failed to respond to Complainant’s cease-and-desist letter.

Complainant requests transfer of the disputed domain names.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:

(i) the disputed domains are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) Respondent has registered and is using the disputed domain names in bad faith.

Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

A. Identical or Confusingly Similar

Complainant has provided evidence establishing that it has trademark rights in the ONLYFANS mark through registrations in the United States, European Union and United Kingdom. Complainant thereby satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.2.1.

In comparing Complainant’s ONLYFANS mark with the disputed domain names, the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark. The addition of the geographic term “cuba” does not prevent a finding of confusing similarity, since Complainant’s mark is reflected in its entirety in both disputed domain names. See, for example, Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768 and BHP Billiton Innovation Pty Ltd v. Oloyi, WIPO Case No. D2017-0284.

It is the well-established view of UDRP panels that the generic Top-Level Domain (“gTLD”) “.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, and cases cited thereunder).

Section 1.7 of WIPO Overview 3.0 provides: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.”

Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, Respondent’s use of, or demonstrable preparations to use the disputed domain names or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent has been commonly known by the disputed domain names, even if it has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The circumstances stated in the Complaint, the amendment thereto and evidence in support set forth in the annexes thereto indicate that, at the time that Respondent registered the disputed domain names, Respondent had no rights or legitimate interests in the disputed domain names. The nature of the disputed domain names, which comprise Complainant’s registered and well-established ONLYFANS mark and a geographic term, cannot constitute fair use because Respondent effectively impersonates or suggests sponsorship or endorsement by the trademark owner. The Proctor & Gamble Company v. Whoisguard, Inc. / Enzo Gucci, Xtremecare, Tony Mancini, USDIET, USDIET Ltd, WIPO Case No. D2016-1881; Chicago Mercantile Exchange Inc. v. Fortune Trading, WIPO Case No. D2020-3132.

The Panel finds that there is no evidence that Respondent is commonly known by the disputed domain names or is using the ONLYFANS mark with permission of Complainant. Rather, the record supports Complainant’s express assertion that such permission does not exist. Complainant’s rights in the ONLYFANS mark predate the registration of the disputed domain names by several years. The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names.

Pursuant to WIPO Overview 3.0, section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain names.

Respondent, in failing to file a Response, has not proved rights or legitimate interests. Additionally, the Panel finds that there is no evidence that Respondent is commonly known by the disputed domain names or is using the ONLYFANS mark with the permission of Complainant, or that any of the fair use exceptions would apply. Rather, Respondent is apparently using the disputed domain names in connection with a scheme to deceive Internet users. It is the consensus view of UDRP panels that such use can never confer rights or legitimate interests. See WIPO Overview 3.0, section 2.13.1 and cases cited thereunder. See also, for example, Netbet Enterprises Ltd, Technospin Limited v. Host Master, 1337 Services LLC, WIPO Case No. D2021-0364.

Respondent, in failing to file a response, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. There is no information available that would support a finding of a fair use of the disputed domain names. Considering the high degree of similarity between Complainant’s ONLYFANS mark and the disputed domain names and the fact that the disputed domain names redirect/resolve to a website offering services purportedly similar to that of Complainant, there can be no finding of rights or legitimate interests in the disputed domain names.

Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of a disputed domain name in bad faith:

(i) circumstances indicating that Respondent has registered or has acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the disputed domain names registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain names; or
(ii) Respondent has registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel finds bad faith under Policy paragraph 4(b)(iv). The evidence in the record demonstrates that Respondent chose the disputed domain names deliberately for the purpose of impersonating or attempting to create an association with Complainant. Complainant’s rights in the ONLYFANS mark predate by several years the registration of the disputed domain names. The disputed domain names comprise Complainant’s registered ONLYFANS mark, with the addition of the geographic term “cuba”. The Panel finds that such a registration creates a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4, describing the types of evidence that may support a finding of bad faith.

Having established that the disputed domain names were registered in bad faith, the Panel next turns to the issue of whether Respondent has engaged in bad faith use of the disputed domain names. The Panel finds that Respondent has demonstrated bad faith use in establishing a website featuring services that appear to be identical to those of Complainant. Respondent’s website contains numerous indicia of fraudulent activity, including unauthorized use of Complainant’s device mark and formatting that imitates Complainant’s business in colors, layout and content. Based on these similarities, an Internet user could readily assume that Respondent is affiliated with Complainant and be induced to provide personal data to Respondent for purposes that cannot be legitimate. Respondent’s conduct is deceptive. UDRP panels have uniformly held that such conduct is indicative of bad faith. See, for example, Spoke Media Holdings, Inc. v. Andrey Volkov, WIPO Case No. D2010-1303; Accor v. SANGHO HEO / Contact Privacy Inc., WIPO Case No. D2014-1471; Chicago Mercantile Exchange Inc. v. Fortune Trading, WIPO Case No. D2020-3132.

Respondent has failed to file any response or provide any evidence of actual or contemplated good faith use, and the circumstances do not make any such use plausible.

The Panel therefore finds that Complainant has established the third element under paragraph 4(a) of the Policy.

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 names <cubaonlyfans.com> and <onlyfanscuba.com> be transferred to Complainant.

Ingrīda Kariņa-Bērziņa
Sole Panelist
Date: June 7, 2021