WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fenix International Limited v. Nicolas Landry
Case No. D2021-0881
1. The Parties
The Complainant is Fenix International Limited c/o Walters Law Group, United States of America (“United States”).
The Respondent is Nicolas Landry, Canada.
2. The Domain Names and Registrar
The disputed domain names <onlyfansquebec.com> and onlyfanstopcreators.com> are registered with GoDaddy.com, LLC (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 disputed domain names. On March 25, 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 the Complainant on March 30, 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.
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 proceeding commenced on April 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 5, 2021. The Respondent sent an informal email to the Center on March 30, 2021, but did not submit any response. Accordingly, the Center notified the Respondent’s default on April 30, 2021.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on May 26, 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 incorporated in England and the owner and operator, since 2013, of a social media platform that allows users to post and subscribe to audiovisual content, under the trade mark ONLYFANS (the “Trade Mark”).
The Complainant is the owner of several registrations for the Trade Mark, including European registration No. 017912377 with a registration date of January 19, 2019; and United States registration No. 5,769,267, with a registration date of June 4, 2019.
The Complainant is also the owner of the domain name <onlyfans.com> comprising the Trade Mark, registered since January 29, 2013.
According to Alexa Internet, the Complainant’s website at “www.onlyfans.com” is the 428th most popular website on the World Wide Web, and the 187th most popular website in the United States.
The Respondent is an individual resident in Canada.
C. The Disputed Domain Names
The disputed domain names were both registered on February 4, 2021.
D. Use of the Disputed Domain Names
The disputed domain names have been resolved to the same website, being a social media platform providing the same audiovisual posting and subscription services provided by the Complainant under the Trade Mark, but with a focus on adult content, for commercial gain (the “Website”).
5. Parties’ Contentions
The Complainant contends that the disputed domain names are identical or confusingly similar to the Trade Mark; the Respondent has no rights or legitimate interests in respect of the disputed domain names; and the disputed domain names have been registered and are being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
The disputed domain names incorporate the entirety of the Trade Mark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7) together with the words “quebec” and “top creators”, respectively.
Where a relevant trade mark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element (see WIPO Overview 3.0, section 1.8).
The Panel therefore finds that the disputed domain names are confusingly similar to the Trade Mark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name even if the respondent has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that he has acquired any trade mark rights in respect of the disputed domain names or that the disputed domain names have been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain names have been used in respect of the Website, which provides the same services offered by the Complainant for many years under the Trade Mark, but with an adult content focus, for commercial gain.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names; and there has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names.
The Panel finds that the Respondent has failed to produce any evidence to rebut the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Panel therefore finds that the Respondent lacks rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
In light of the manner of the use of the disputed domain names highlighted in Section 6.B. above, the Panel finds that the requisite element of bad faith has been made out.
The Panel therefore finds that the disputed domain names have been registered and are being used in bad faith.
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 <onlyfansquebec.com> and onlyfanstopcreators.com> be transferred to the Complainant.
Sebastian M.W. Hughes
Dated: June 9, 2021