WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fenix International Limited v. Jayson Many, media friend / WhoisGuard, Inc.
Case No. D2021-0880
1. The Parties
Complainant is Fenix International Limited c/o Walters Law Group, United States of America (“United States” or “US”).
Respondent is Jayson Many, media friend / WhoisGuard, Inc., United States.
2. The Domain Name(s) and Registrar(s)
The disputed domain name <wwwonlyfanscom.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 23, 2021. On March 24, 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 Complainant on March 25, 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 25, 2021. The Center sent a Possible Settlement email on April 6, 2021, to the Parties based upon Respondent’s email dated April 1, 2021, which stated, in part, “I emailed my register to delete the domain. I don't want any problems. Thanks.”
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 March 31, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 20, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 22, 2021.
The Center appointed John C. McElwaine as the sole panelist in this matter on April 29, 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 United Kingdom limited company providing an online social media platform that allows users to post and subscribe to audiovisual content.
Complainant is the owner of the following trademark registrations, among others, alleged to be relevant to this matter:
- ONLY FANS, European Union Trademark Registration No. EU017912377 registered on January 9, 2019 in International Classes 9, 35, 38, 41 and 42;
- ONLY FANS (stylized), European Union Trademark Registration No. EU017945559 registered on January 9, 2019 in International Classes 9, 35, 38, 41 and 42;
- ONLY FANS, United Kingdom Trademark Registration No.UK00917912377 registered on January 9, 2019 in International Classes 9, 35, 38, 41 and 42;
- ONLY FANS (stylized), United Kingdom Trademark Registration No. UK00917946559 registered on January 9, 2019 in International Classes 9, 35, 38, 41 and 42;
- ONLY FANS, United States Trademark Registration No. 5769267 registered on June 4, 2019 in International Class 35;
- ONLYFANS.COM, United States Trademark Registrationn No. 5769268 registered on June 4, 2019 in International Class 35;
- ONLY FANS, United States Trademark Registration No. 6253455 registered on January 26, 2021 in International Classes 9, 35, 38, 41 and 42;
- ONLY FANS (stylized), United States Trademark Registration No. 6253475 registered on January 26, 2021 in International Classes 9, 35, 38, 41 and 42.
The Domain Name was registered on February 7, 2021, and is forwarding to <freakycrush.com> which is a website with adult content.
5. Parties’ Contentions
As background, Complainant alleges that its website, located at <onlyfans.com> is one of the most popular websites in the world and that according to Alexa Internet, it is the 428th most popular website on the World Wide Web, and it is the 187th most popular website in the United States. Because <onlyfans.com> is one of the most visited websites in the world, Complainant asserts that it has become a target for cybersquatters wishing to profit from the goodwill that Complainant has garnered in its trademarks.
With respect to the first element of the Policy, Complainant alleges that in addition to the above-referenced trademark registrations in the United States, United Kingdom and its International Registration, it has used the ONLY FANS trademark since at least June 4, 2016, and that Complainant’s common law rights have been recognized by an earlier UDRP panel as having acquired distinctiveness by at least May 30, 2017. For the purpose of this proceeding, Complainant’s common law and registered trademark rights are referred to herein as the “ONLY FANS Mark.” Complainant further asserts that the Domain Name is identical or confusingly similar to Complainant’s trademarks because the ONLY FANS Mark is recognizable and the Domain Name separated only by the “www” prefix and “com” suffix added to the Complainant’s ONLY FANS Mark.
With respect to the second element of the Policy, Complainant alleges that Respondent is using the Domain Name to redirect to an adult-oriented website, which offers “nude photos, videos, and live streams” in direct competition with Complainant’s services, which similarly include “providing entertainment services in the nature of a website featuring non-downloadable video, photographs, images, audio, and in the field of adult entertainment”. Complainant also alleges that Respondent is not making noncommercial use or fair use of the Domain Name and is not commonly known by the Domain Name.
Lastly, with respect to the third element of the Policy, Complainant asserts that Respondent registered the Domain Name in bad faith because Complainant had been using the ONLY FANS Mark for more than four years prior to the registration, and began operating a website that provided services in direct competition with Complainant. Moreover, Complainant alleges that Respondent had constructive notice of its trademark rights by virtue of Complainant’s pre-existing United States trademark registrations. Complainant also alleges that bad faith use of the Domain Name is established because the Domain Name redirects to a commercial website that offers adult entertainment content in direct competition with the Complainant’s services. In addition, Complainant points out that as additional evidence of bad faith registration and use, Respondent allegedly hid its identity and failed to respond to a demand letter.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Even though Respondent has defaulted, paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with evidence demonstrating:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Because of Respondent’s default, the Panel may accept as true the reasonable factual allegations stated within the Complaint and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited v. AnonymousSpeech LLC and Global House Inc., WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International, WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainant show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2. On this point, Complainant has provided evidence that it is the owner of multiple trademark registrations for the ONLY FANS Mark. The Panel finds that the Complainant owns valid trademark rights in the ONLY FANS Mark and that said rights predate the registration of the Domain Name.
The Domain Name consists of the ONLY FANS Mark but for the addition of “www” and “com”. According to section 1.7 of the WIPO Overview 3.0, “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. The fact that the ONLY FANS Mark is preceded by “www”, which is a common form of typosquatting, does not serve to distinguish the Domain Name from the ONLY FANS Mark. See JCB Co., Ltd. v. Wen Tao, 111, WIPO Case No. D2020-3212. Moreover, the duplication of “com” following the ONLY FANS Mark in the Domain Name does not dispel confusing similarity between the Domain Name and the Complainant’s trademark. See Accor v. David Larson, WIP Case No. D2020-1680.
Accordingly, the Panel finds that the Domain Name is confusingly similar to the Complainant’s ONLY FANS Mark in which the Complainant has valid trademark rights. Therefore, the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Under the Policy paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Name. Complainant need only make a prima facie showing on this element, at which point the burden shifts to Respondent to present evidence that it has some rights or legitimate interests in the Domain Name. If Respondent has failed to do so, Complainant is deemed to have satisfied its burden under paragraph 4(a)(ii) of the Policy. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252.
Here, Complainant asserts that Respondent is not authorized to have registered the Domain Name which forwards to the adult-oriented website located at <freakycrush.com>. Complainant alleges that Respondent services offered from this website are in direct competition with Complainant’s entertainment services in the nature of a website featuring non-downloadable video, photographs, images, audio, and text in the field of adult entertainment. Although properly notified by the Center, Respondent failed to submit any response on this point. The silence of a respondent may support a finding that it has no rights or legitimate interests in respect of the domain name. See Alcoholics Anonymous World Services, Inc., v. Lauren Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S., WIPO Case No. D2000-0011. Additionally, previous UDRP panels have found that when respondents have not availed themselves of their rights to respond to complaint, it can be assumed in appropriate circumstances that respondents have no rights or legitimate interests in the disputed domain name. See AREVA v. St. James Robyn, WIPO Case No. D2010-1017; Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269.
Nevertheless, under paragraph 4(c) of the Policy, a respondent’s rights or legitimate interests to a domain name may be established by demonstrating any of the following three conditions: (i) before any notice to respondent of the dispute, respondent’s 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) respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or (iii) respondent is 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 Respondent will not be able to show rights or legitimate interests under any of the three conditions.
As an initial matter, Respondent cannot satisfy paragraph 4(c)(ii) of the Policy. There is no evidence in the record that Respondent is commonly known by the name “wwwonlyfanscom”. In fact, to the contrary, the WhoIs information indicates that Respondent’s name is “Jayson Many, media friend”.
Respondent is using the Domain Name in connection with a website that purports to offer “nude photos, videos and live streams” of women. However, no information is provided about Complainant or the source of these services on the home page. With no clear indicator of the source it likely that consumers will conclude that the website must be related to Complainant. Prior panels deciding under the UDRP have held that such use of a domain name cannot be a "bona fide offering of goods or services". See Microsoft Corporation v. Microsof.com aka Tarek Ahmed, WIPO Case No. D2000-0548 ("by using a domain name and establishing a website deliberately designed to confuse Internet users and consumers regarding the identity of the seller of the goods and services, Respondent has not undertaken a bona fide or good faith offering of the goods and services."); see also Hulu, LLC v. Helecops, Vinod Madushanka, WIPO Case No. D2016-0365 (finding that an infringing website operating under the name “HuluMovies” does not entail a bona fide offering of services in the sense of paragraph 4(c)(i) of the Policy, nor a legitimate noncommercial or fair use under Policy paragraph 4(c)(iii), without intent for commercial gain to misleadingly divert consumers or to tarnish the HULU mark.)
Lastly, Respondent’s use of the Domain Name is not “noncommercial or fair use” under paragraph 4(c)(iii) of the Policy, given that Respondent purports to offer adult entertainment services in competition with Complainant. Such activity does not amount to a fan site, criticism or other activity that may be considered noncommercial or fair. See, e.g., Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647 (respondent’s “website was clearly and obviously a site that was highly critical of Complainant”).
In sum, Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests and Respondent has failed to come forward to rebut that showing. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent’s default as it considers appropriate. For all these reasons, the Panel is entitled to accept that the second element of the Policy is established by Complainant, and Respondent has no rights or legitimate interests in respect of the Domain Name, pursuant to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.
Bad faith registration can be found where a respondent “knew or should have known” of a complainant’s trademark rights and nevertheless registered a domain name in which it had no right or legitimate interest. See Accor v. Kristen Hoerl, WIPO Case No. D2007-1722. As detailed above, Respondent registered the Domain Name which is confusingly similar to the ONLY FANS Mark. There is no explanation for Respondent to have chosen to register the Domain Name other than to intentionally trade off the goodwill and reputation of Complainant’s trademark or otherwise create a false association with Complainant. With no response from Respondent, this claim is undisputed.
In addition, it is well settled that the practice of typosquatting constitutes obvious evidence of the bad faith registration of a domain name. See, Admiral Group Plc and EUI Limited v. Cimpress Schweiz, Cimpress Schweiz GmbH, WIPO Case No. DCO2017-0043 (citing Longs Drug Stores California, Inc. v. Shep Dog, WIPO Case No. D2004-1069 (finding typosquatting to be evidence of bad faith domain name registration); Lexar Media, Inc. v. Michael Huang, WIPO Case No. D2004-1039 (“Typosquatting has been held under the Policy to be evidence of bad faith registration of a domain name”); Wal-Mart Stores, Inc. v. Longo, WIPO Case No. D2004-0816 (“[typosquatting] is presumptive of registration in bad faith”)). Typosquatting can be defined as “inherently parasitic and of itself evidence of bad faith”, Insurance Company v. Dyk Dylina/Privacy--Protect.org, WIPO Case No. D2011-0304. The Domain Name here was intentionally registered as a common typographical version or to appear confusingly similar to the ONLY FANS Mark.
As discussed herein, Respondent registered the Domain Name and linked it to a website offering services in competition with Complainant and without clearly disclosing the source of those services. This amounts to bad faith use of the Domain Name by Respondent. See Identigene, Inc. v. Genetest Labs, WIPO Case No. D2000-1100 (finding bad faith where the respondent’s use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); MathForum.com, LLC v. Weiguang Huang, WIPO Case No. D2000-0743 (finding bad faith under paragraph 4(b)(iv) of the Policy where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Lastly, Panels have previously held that failure to respond to a cease and desist letter regarding alleged trademark infringement involving a domain name registration is evidence that the respondent was aware that it has no rights or legitimate interests in the domain name(s) at issue, and that the domain name(s) were registered and used in bad faith. See, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Complainant sent a cease and desist letter to Respondent on February 26, 2021. Complainant has not received a substantive response. Accordingly, Respondent’s failure to respond to Complainant’s pre-complaint allegations is further evidence to support an inference of Respondent’s bad faith.
As detailed above, the Panel finds on the record before it that Respondent’s intention in registering the Domain Name was to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the ONLY FANS Mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. Thus, the Panel holds that Complainant has met its burden of providing sufficient evidence that Respondent registered and is using the Domain Name in bad faith under paragraph 4(b)(iv) of the Policy.
For these reasons, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using 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, <wwwonlyfanscom.com>, be transferred to Complainant.
John C. McElwaine
Date: May 11, 2021