WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fenix International Limited v. Datos privados
Case No. D2021-1306
1. The Parties
The Complainant is Fenix International Limited c/o Walters Law Group, United States of America (“United States”).
The Respondent is Datos privados, Spain.
2. The Domain Name and Registrar
The disputed domain name <onlyfansfiltrados.site> is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2021. On April 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 29, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 April 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 21, 2021.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on June 1, 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 offers a content subscription website at its website <onlyfans.com>, in which creators charge for access to their respective profiles.
The trademark ONLYFANS was registered by the Complainant in several regions of the world, including in the United States (registration number 5,769,267, registered on June 4, 2019) and in the European Union (European Union Trademark numbers EU017946559 and EU017912377, both registered on January 9, 2019).
The Complainant’s main domain name <onlyfans.com> was registered on January 29, 2013.
The Respondent registered the disputed domain name <onlyfansfiltrados.site> on March 3, 2021.
The Panel accessed the disputed domain name on June 10, 2021, at which time the disputed domain name was not pointing to any active webpage. However, the Complaint contains evidence that the disputed domain name has been linked to a website offering contents previously published at <onlyfans.com>, without authorization and in direct competition with the Complainant, and not remunerating the respective creators.
5. Parties’ Contentions
The Complainant makes the following contentions:
- The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant’s website at <onlyfans.com> is one of the most popular websites in the world and has become a prime target for cybersquatters wishing to profit from the goodwill that the Complainant has garnered in the ONLYFANS mark. The disputed domain name consists of the Complainant’s exact mark plus the addition of the Spanish word “filtrados”. In English, “filtrados” means “filtered”, a common term in the online adult entertainment space, referring to a user’s ability to search content based on different genre, length, and quality type preferences. The disputed domain name is confusingly similar to the Complainant’s mark because the additional descriptive term “filtrados” does nothing to confer rights or legitimate interests in the disputed domain name. Finally, the use of the “.site” generic Top-Level Domain (“gTLD”) do not serve to distinguish the disputed domain name from the Complainant’s mark.
- The Respondent has no rights or legitimate interests in respect of the disputed domain name. Registration and use of a domain name in bad faith cannot establish rights or legitimate interests. Using a disputed domain name to host commercial websites that advertise goods and services for sale in direct competition with the trademark owner does not give rise to rights or legitimate interests. In the present case, no evidence indicates that the Respondent is known by the disputed domain name. Moreover, providing content uploaded by the Complainant’s users to the Complainant’s website on the Respondent’s website – free of charge – does not amount to a legitimate noncommercial or fair use of the disputed domain name under the Policy.
- The disputed domain name was registered and is being used in bad faith. The Respondent was likely aware of the Complainant’s trademark rights when it registered a confusingly similar domain name and began operating a website that provides services in direct competition with the Complainant. The fact that the Respondent must have been aware of the Complainant’s internationally well-known marks at the time of registration is evidence of bad faith registration. Because there is no benign reason for the Respondent to have registered the disputed domain name, it is clear that the Respondent registered the disputed domain name to target the Complainant’s mark ONLYFANS. The Respondent knew or should have known of the registration and use of the ONLYFANS trademark prior to registering the disputed domain name. The Respondent hid his/her identity from the public behind a WhoIs privacy wall. The Respondent’s failure to respond to a cease-and-desist letter sent by the Complainant is final evidence of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements:
(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 respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Annex E to the Complaint shows trademark registrations for ONLYFANS obtained by the Complainant as early as in 2019. The Complainant also asserts unregistered trademark rights on the same expression, based on the registration of its official domain name <onlyfans.com>, in 2013, as well as in the successful operation of the respective website, since 2016.
The disputed domain name differs from the Complainant’s trademark ONLYFANS merely by the addition of the term “filtrados” and of the gTLD “.site”.
“Filtrados” is a Spanish word that can be translated to English as “filtered” (although it could also have the meaning of “leaked”). Previous UDRP panels have consistently found that the additional terms in a domain name does not avoid a finding of confusing similarity. This has been held in many UDRP decisions (see, e.g., Inter-IKEA Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437; The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601; Wal-Mart Stores, Inc. v. Lars Stork, WIPO Case No. D2000-0628; America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713; AltaVista Company v. S. M. A., Inc., WIPO Case No. D2000-0927).
It is also well established that the addition of a gTLD suffix such as “.site” is typically irrelevant when determining whether a domain name is confusingly similar to a complainant’s trademark.
As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, and that the Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate rights or legitimate interests in a domain name:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the 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 at issue.
Based on the Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has not licensed or authorized the usage of its trademarks to the Respondent, and it does not appear from the present record that the Respondent is commonly known by the disputed domain name.
The Panel also notes that the present record provides no evidence to demonstrate the Respondent’s intent to use or to make preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the Complainant has brought evidence that the disputed domain name has been linked to a competing website, unauthorizedly reproducing its contents, which were offered free of charge, without remunerating its respective creators.
Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 its website or location or of a product or service on its website or location.
When the disputed domain name was registered on March 3, 2021, the ONLYFANS trademark was already undoubtedly connected with the Complainant’s website and online services.
The disputed domain name encompasses the distinctive mark ONLYFANS, together with the suffix “filtrados”. The Panel considers that the addition of such term even enhances the likelihood of confusion with the Complainant, as it suggests that the website at the disputed domain name is authorized by the Complainant to filter and provide access – free of charge – to contents of ONLYFANS’ profiles. Therefore, the Panel finds that the Respondent registered the disputed domain name to take unfair advantage of its similarity with the ONLYFANS trademark.
Such circumstance leads the Panel to conclude that it would not be feasible to consider that the Respondent – at the time of the registration of the disputed domain name – could not have been aware of the Complainant’s trademark, as well as that the adoption of the expression “onlyfansfiltrados” could be a mere coincidence.
Currently, no active website is linked to the disputed domain name, but this does not prevent the Panel to make a finding that the disputed domain name is also being used in bad faith.
In the Panel’s view, the present absence of contents at the disputed domain name and the fact that the Respondent has not answered the case or the cease-and-desist letter sent by the Complainant, not providing any justifications for the registration of a domain name containing a third-party famous trademark, certainly cannot be used in benefit of the Respondent.
Such circumstances, associated with the evidence that the Respondent previously used the disputed domain name to publish unauthorized contents extracted from the Complainant’s official website, are enough in this Panel’s view to characterize bad faith registration and use in the present case.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third element 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 <onlyfansfiltrados.site> be transferred to the Complainant.
Date: June 15, 2021