WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fenix International Limited v. Withheld for Privacy Purposes, Privacy Service provided by Withheld for Privacy ehf / Brent Harracksingh
Case No. D2021-1337
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 Withheld for Privacy Purposes, Privacy Service provided by Withheld for Privacy ehf, Iceland / Brent Harracksingh, Canada.
2. The Domain Name and Registrar
The disputed domain name <onlythotfans.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2021. On April 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 3, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 4, 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 May 4, 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 proceedings commenced on May 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 1, 2021. The Respondent sent an email communication to the Center on May 4, 2021.
The Center appointed Marilena Comanescu as the sole panelist in this matter on June 8, 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 owns and operates the website located at the domain name <onlyfans.com> registered on January 29, 2013, and used in connection with the provision of a social media platform that allows users to post and subscribe to audivisual content on the Internet.
In 2021, the Complainant’s website was ranked by Alexa Internet in the first 500 world most popular websites on the Internet and the 187th most visited website in the United States.
The Complainant holds trademark registrations for ONLYFANS, such as the following:
- the United States trademark registration number 5769267 for the word ONLYFANS, filed on October 29, 2018, and registered on June 4, 2019, and covering services in the International class 35; and
- the European Union trademark registration number 017912377 for the word ONLYFANS, filed on June 5, 2018, and registered on January 9, 2019, and covering goods and services in the International classes 9, 35, 38, 41 and 42.
The disputed domain name <onlythotfans.com> was registered on February 11, 2021, and at the time of filing the Complaint, it was connected to a commercial website that advertise for sale goods and services in direct competition with the Complainant, hosting adult entertainment content, including content pirated from the Complainant’s users and posted on the Complainant’s website, displaying the text “[…] OnlyFans Pack [...]”.
Prior to commencing the present procedure, on March 9, 2021, the Complainant send a Cease and Desist letter to the Respondent. No response was received.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to its famous trademark ONLYFANS with the descriptive term “thot”, which is a popular abbreviation on the Internet meaning “that hoe over there”, the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent registered and is using the disputed domain name in bad faith. The Complainant requested the cancellation of the disputed domain name.
The Respondent did not submit a formal response but send an email communication on May 4, 2021, stating in particular that “the idea that someone owns the words ‘only’ and ‘fans’ is ridiculous, the domain doesn’t say onlyfans, it says only-thot-fans. I don’t care about this domain and it is essentially unused”.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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 Panel will further analyze the potential concurrence of the above circumstances.
A. Identical or Confusingly Similar
The Panel finds that the Complainant holds rights in the ONLYFANS trademark.
The disputed domain name incorporates the Complainant’s ONLYFANS trademark with an additional term, “thot”. However, such addition does not prevent a finding of confusing similarity, as the Complainant’s trademark is clearly recognizable within the disputed domain name.
Numerous UDRP panels have considered that the addition of other terms (whether geographical wording, descriptive, pejorative, meaningless or otherwise) to trademarks in a domain name is not sufficient to escape a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g., “.com”, “.site”, “.info”, “.shop”) is typically disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name. See section 1.11 of the WIPO Overview 3.0.
Given the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark ONLYFANS, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Complainant asserts that the Respondent does not hold any trademark rights, license or authorization whatsoever to use the mark ONLYFANS, that the Respondent is not commonly known by the disputed domain name, and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods or services.
Under the Policy, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. See section 2.1 of theWIPO Overview 3.0.
Under this element, the Respondent relies particularly on the claim that the disputed domain name is formed of dictionary words together with another word.
With regard to the domain names formed of dictionary terms, the majority view of previous UDRP panels, reflected in section 2.10.1 of the WIPO Overview 3.0., is that merely registering a domain name comprised of a dictionary word or phrase does not by itself automatically confer rights or legitimate interests on the respondent; previous UDRP panels have held that in order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights.
For example, a hypothetical respondent may well have a legitimate interest in the domain name <orange.com> if it uses the domain name for a website providing information about the fruit or the color orange. The same respondent would not however have a legitimate interest in the domain name if the corresponding website is aimed at goods or services that target a third-party trademark (in this example: Orange, well-known inter alia for telecommunications and Internet services) which uses the same term as a trademark in a non-dictionary sense.
UDRP panels also tend to look at other factors, such as the status and fame of the relevant mark and whether the respondent has registered and legitimately used other domain names containing dictionary words or phrases in connection with the respective dictionary meaning.
In this case the Respondent was using the disputed domain name in connection with a commercial website offering goods and services in direct competition with the Complainant and, furthermore, providing, without any authorization, content uploaded by the Complainant’s users to the Complainant’s website on the Respondent’s website free of charge and without any authorization. In the same time, the Complainant’s trademark is well-known in its field of activity. See also Fenix International Limited v. WhoisGuard Protected, WhoisGuard, Inc / Genadiy Ivanov, WIPO Case No. D2021-0828.
In view of the above, the Panel accepts as more likely than not that the Respondent has chosen, and registered, the disputed domain name not in connection with any alleged dictionary meaning of it, but to take advantage of the reputation of the ONLYFANS trademark by creating a false connection with the Complainant in order to confuse the Internet users into believing there is a sort of connection between the Respondent and the Complainant.
For all these reasons, the Panel finds that the second element of the Policy is established, and the Respondent has no rights or legitimate interests in respect of the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Complainant holds registered trademark rights for ONLYFANS since at least 2018 and the website <onlyfans.com> is registered since 2013. According to the evidence provided in the Complaint, the Panel is satisfied that the Complainant’s ONLYFANS trademark is well-known and highly recognized within its industry. See also Fenix International Limited v. WhoisGuard Protected, WhoisGuard, Inc / Genadiy Ivanovsupra.
The disputed domain name was registered in 2021 and incorporates the Complainant’s mark with an additional term “thot”.
For the above reasons, the Panel finds that the disputed domain name was registered in bad faith, with knowledge of the Complainant, its business and particularly targeting the Complainant’s trademark.
The Respondent is using without permission the Complainant’s distinctive trademark in order to get traffic on its web portal and to obtain commercial gain from the false impression created for the Internet users with regard to a potential connection with the Complainant. This impression is created particularly by the incorporation of the Complainant’s well-known trademark in the disputed domain name, the content on the website provided thereunder which includes goods and services similar to those offered by the Complainant and also content from the Complainant’s official website.
Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location or of a product or service on [the respondent’s] website or location” is evidence of registration and use in bad faith.
Given that the disputed domain name incorporates the Complainant’s trademark and the website operated under the disputed domain name provide goods and services similar to those offered by the Complainant and also content pirated from the Complainant’s official website, indeed in this Panel’s view, the Respondent intended to attract Internet users accessing the website corresponding to the disputed domain name who may be confused and believe that the website is held, controlled by, or somehow affiliated or related to the Complainant, for its commercial gain.
Furthermore, it was consistently found by previous UDRP panels that the mere registration of a domain name that is identical or confusingly similar to a third party’s well-known trademark constitutes, by itself, a presumption of bad faith registration for the purpose of Policy. See section 3.1.4 of the WIPO Overview 3.0.
For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii).
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 <onlythotfans.com> be cancelled.
Date: June 16, 2021