WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fenix International Limited c/o Walters Law Group v. Reshad Bashir, AXC BV
Case No. D2021-1603
1. The Parties
The Complainant is Fenix International Limited c/o Walters Law Group, United States of America (“United States”), represented by Walters Law Group, United States.
The Respondent is Reshad Bashir, AXC BV, the Netherlands.
2. The Domain Name and Registrar
The disputed domain name <onlyfans-fotograaf.site> (the “Disputed Domain Name”) is registered with Realtime Register B.V. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 21, 2021. On May 25, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 26, 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 June 1, 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 June 1, 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 June 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 22, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 23, 2021.
The Center appointed Nicholas Weston as the sole panelist in this matter on July 2, 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 the United States that operates an online social media platform that allows users to post and subscribe to audiovisual content. The Complainant holds registrations for the trademark ONLYFANS and variations of it in several countries, including, for example, European Union Trade Mark Registration No. 017902377, registered on January 9, 2019 in classes 9, 35, 38, 41 and 42 and United States Trademark Registration No. 5,769,268, registered on June 4, 2019 in class 35.
The Complainant registered the domain name <onlyfans.com> on January 29, 2013.
The Respondent registered the Disputed Domain Name <onlyfans-fotograaf.site> on December 27, 2020. The Disputed Domain Name resolves to a website with adult content.
5. Parties’ Contentions
The Complainant cites trademark registrations including European Trade Mark Registration No. 017902377, registered on January 9, 2019 in classes 9, 35, 38, 41 and 42 and United States Trademark Registration No. 5,769,268, registered on June 4, 2019 in class 35 for the mark ONLYFANS, as prima facie evidence of ownership.
The Complainant submits that the trademark ONLYFANS is well-known and that its rights in that trademark predate the Respondent’s registration of the Disputed Domain Name. It submits that the Disputed Domain Name is confusingly similar to its trademark, because the Disputed Domain Name incorporates in its entirety the ONLYFANS trademark, and that the similarity is not removed by, it states: “the additional descriptive term “fotograaf” – Dutch for “photograph”, term, or the addition of a hyphen and the generic Top-Level Domain (“gTLD”) “.site”.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because “the website at the Disputed Domain Name sells adult entertainment content in direct competition with Complainant’s services”, and contends that such a Respondent has no rights or legitimate interests in the Disputed Domain Name.
Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules having regard to the fame and prior use of the Complainant’s trademarks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:
(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the trademark ONLYFANS in the United States and in other jurisdictions. The propriety of a domain name registration may be questioned by comparing it to a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358).
Turning to whether the Disputed Domain Name is identical or confusingly similar to the ONLYFANS trademark, the Panel observes that the Disputed Domain Name comprises (a) an exact reproduction of the Complainant’s trademark ONLYFANS followed by (b) a hyphen; (c) followed by the term “fotograaf”, and (d) followed by the gTLD “.site”, all in one continuous domain name.
It is well-established that the gTLD used as part of a domain name is generally disregarded unless the gTLD takes on special significance where it has relevance to the analysis (see Autodesk v. MumbaiDomains, WIPO Case No. D2012-0286; Alstom v. WhoisGuard Protected, WhoisGuard, Inc. / Richard Lopez, Marines Supply Inc, WIPO Case No. D2021-0859). The gTLD chosen appears to have no special significance in this proceeding. The relevant comparison to be made is with the Second-Level portion of the Disputed Domain Name: “onlyfans-fotograaf”.
It is also well-established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it is confusingly similar to that mark despite the addition of words such as, in this case, “fotograaf” (see Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033; Hoffmann-La Roche Inc. v. Andrew Miller, WIPO Case No. D2008-1345). This Panel finds that a hyphen and the addition of the Dutch word “fotograaf”, meaning “photographer”, are additional elements that do not serve to prevent a finding of confusing similarity of the Disputed Domain Name (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name. The Policy also places the burden on the complainant to establish the absence of respondent’s rights or legitimate interests in the disputed domain name. Because of the inherent difficulties in proving a negative, the consensus view is that the complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The burden of production then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview 3.0, section 2.1).
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it is not his name, there is no license from the Complainant to use the Complainant’s trademark, there is no evidence of the Respondent’s use, or demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods and services, and the evidence is that it resolves to a webpage with content that competes with content of the kind served by the Complainant.
The uncontested evidence is that the Respondent has not made, and is not currently making, a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers pursuant to paragraph 4(c)(iii) of the Policy. Nor, alternatively, does paragraph 4(c)(ii) of the Policy apply.
The Panel also finds that the nature of the Disputed Domain Name and the associated website content carries a high risk of implied affiliation with the Complainant’s trademark and that such a false suggestion of affiliation is not a fair or legitimate use (see WIPO Overview 3.0, section 2.5.1).
This Panel accepts that the Complainant has made out a prima facie case that the Respondent lack rights or legitimate interests in the Disputed Domain Name and, in the absence of a Response by the Respondent, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The third element of the Policy that the complainant must also demonstrate is that the disputed domain name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements.
The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith.
On the issue of registration, taking into account the composition of the Disputed Domain Name and the adult content of the website it resolves to, the Panel is satisfied that the Respondent knew of the Complainant’s trademark ONLYFANS when it registered the Disputed Domain Name (see Fenix International Limited v. Leon Key, Key International enterprises LLC, WIPO Case No. D2021-0836 (“the Respondent must have known of the Complainant’s registered trademark ONLYFANS and deliberately registered the disputed domain name, <onlyfansxxx.com>, especially because the website at the disputed domain name is offering the same products and services as the Complainant, namely online adult entertainment content”); Fenix International Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Gary Brown, WIPO Case No. D2021-0830 (“At the date of registration ONLYFANS Mark had been in use for a number of years and had acquired a considerable reputation, not least in the adult entertainment industry”).
On the issue of use, the Complainant’s evidence is that the Disputed Domain Name, diverts to a webpage displaying adult content which, this Panel finds, is an intentional attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website (see WIPO Overview 3.0, section 3.1.4).
In the absence of any evidence to the contrary, this Panel accepts the Complainant’s evidence and finds that the Respondent has taken the Complainant’s trademark ONLYFANS and incorporated it in the Disputed Domain Name along with a hyphen and the Dutch word “fotograaf”, meaning “photographer”, without the Complainant’s consent or authorization, for the purpose of capitalizing on the reputation of the trademark to infringe upon the Complainant’s rights.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 Disputed Domain Name <onlyfans-fotograaf.site> be cancelled, as requested by the Complainant.
Date: July 5, 2021