WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fenix International Limited c/o Walters Law Group v. Whois Privacy, Private by Design, LLC / Edward Thompson

Case No. D2021-2071

1. The Parties

Complainant is Fenix International Limited c/o Walters Law Group, United States of America (“United States”), represented by Walters Law Group, United States.

Respondent is Whois Privacy, Private by Design, LLC, United States / Edward Thompson, United States.

2. The Domain Name and Registrar

The Disputed Domain Name <onlyfans1usd.com> is registered with Porkbun LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2021. On June 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 1, 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 Complainant on July 5, 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 July 5, 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 Respondent of the Complaint, and the proceedings commenced on July 8, 2021. In accordance with the Rules, paragraph 5, the due date for response was July 28, 2021. Respondent sent an informal email communication to the Center on July 6, 2021. The Commencement of Panel Appointment Process was sent to Parties on August 3, 2021.

The Center appointed Richard W. Page as the sole panelist in this matter on August 9, 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 has made extensive use of the ONLYFANS Mark. Complainant had registered rights in the ONLYFANS Mark with the European Union Intellectual Property Office (“EUIPO”) as Registration No. EU017912377 registered on January 9, 2019 and Registration No. 017946559 registered on January 9, 2019. Complaint has also registered with the United States Patent and Trademark Office (“USPTO”) Registration No. 5,769,267 registered on June 4, 2019.

Complainant owns and operates the website located at the domain name <onlyfans.com> and has used its domain name for several years in connection with the provision of a social media platform that allows users to post and subscribe to audio visual content on the Internet.

The Disputed Domain Name was registered on March 12, 2021.

5. Parties’ Contentions

A. Complainant

Complainant contends that in 2021, its “www.onlyfans.com” website is one of the most popular websites in the world. According to Alexa Internet, it is the 379th most popular website on the Internet, and it is the 213th most popular website in the United States. Complainant further contends that because “www.onlyfans.com” is one of the most visited websites in the world, it has become a prime target for cybersquatters wishing to profit from the goodwill that Complainant has garnered in the ONLYFANS Mark. Respondent is one such cybersquatter.

Complainant’s trademark rights have been recognized in nearly twenty other WIPO UDRP decisions, resulting in the transfer of those disputed domain names to Complainant.

Complainant further contends that, when Respondent registered the Disputed Domain Name on March 12, 2021, Complainant had registered rights in the ONLYFANS Mark as early as January 9, 2019. Complainant had used the ONLYFANS Mark since at least June 4, 2016. Further, Complainant’s common law rights have been recognized by an earlier UDRP decision at least as early as May 30, 2017. Thus, Complainant’s rights predate Respondent’s registration of the Disputed Domain Name.

Complainant contends that the Disputed Domain Name is identical or confusingly similar to Complainant’s ONLYFANS Mark, pursuant to paragraph 4(a)(i) of the Policy.

Complainant further contends that WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 states that where the ONLYFANS Mark is wholly incorporated within the Disputed Domain Name, the addition of other descriptive terms do not prevent a finding of confusing similarity. The Disputed Domain Name consists of the ONLYFANS Mark with the only difference being the insertion of the descriptive term “1usd” – in reference to the price which must be paid to allegedly gain unauthorized access to Complainant’s services through the Disputed Domain Name – after the ONLYFANS Mark which does nothing to confer rights or legitimate interests in the Disputed Domain Name to Respondent.

Complainant further contends that the generic Top-Level Domain (“gTLD”) “.com” is not to be considered in determining confusing similarity.

Complainant asserts that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.

Complainant further asserts that Respondent has no connection or affiliation with Complainant and has not received any authorization, license or consent, whether express or implied, to use the ONLYFANS Mark in the Disputed Domain Name or in any other manner. Respondent is not commonly known by the Disputed Domain Name and does not hold any relevant trademarks.

Complainant further asserts that Respondent has achieved global fame and success in a short time which makes it clear that Respondent knew of the ONLYFANS Mark and knew that it had no rights or legitimate interests in the Disputed Domain Name.

Complainant further asserts that Respondent cannot claim it has a right to use the Disputed Domain Name under fair use, since it includes the ONLYFANS Mark and the descriptive term “1usd” which falsely suggests sponsorship by Complainant.

Complainant further asserts that the website to which the Disputed Domain Name resolves contains a logo that is identical to Complainant’s registered Logo.

Complainant further asserts that Respondent is using a confusingly similar Disputed Domain Name to redirect Internet users to a website offering illegal services. UDRP panels have categorically held that use of a domain name for illegal activity can never confer rights or legitimate interests in Respondent, particularly in the cases of counterfeits, replicas or reproductions; phishing; or providing unauthorized access.

Complainant alleges that Respondent registered and is using the Disputed Domain Name in bad faith, pursuant to paragraph 4(a)(iii) of the Policy.

Complainant further alleges it sent a cease and desist letter to Respondent on April 20, 2021, through the Porkbun WhoIs contact link. Respondent never responded.

Complainant further alleges that Respondent’s intention is to divert Internet users to a website offering unauthorized access to content on Complainant’s website that is otherwise paywall protected in exchange for the visitor’s personal information, in an apparent phishing scheme.

B. Respondent

The informal email sent by Respondent to the Center on July 6, 2021 did not contain any information relevant to this proceeding. Essentially, Respondent did not reply to Complainant’s contentions and asked for a full refund of his domain name registration fees.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable”.

Even though Respondent has failed to file a response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met. See section 4.3 of the WIPO Overview 3.0.

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

i) that the Disputed Domain Name registered by Respondent is identical or confusingly similar to the ONLYFANS Mark in which Complainant has rights; and,

ii) that 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

Complainant further contends that the Disputed Domain Name is identical with and confusingly similar to the ONLYFANS Mark pursuant to paragraph 4(a)(i) of the Policy.

Section 1.2.1 of the WIPO Overview 3.0 states that registration of a trademark is prima facie evidence of Complainant having enforceable rights in the ONLYFANS Mark.

Complainant has shown that it has several registrations of the ONLYFANS Mark. Respondent has not contested this showing.

Therefore, the Panel finds that, for purposes of this proceeding, Complainant has enforceable rights in the ONLYFANS Mark.

See section 1.7 of the WIPO Overview 3.0 says that inclusion of the entire trademark in a domain name will be considered confusingly similar. Also see section 1.8 of the WIPO Overview 3.0 instructs that the addition of other terms (whether descriptive, geographical, pejorative, meaningless or otherwise) does not prevent a finding of confusing similarity. Also see section 1.11.1 of the WIPO Overview 3.0 instructs that gTLDs such as “.com” may be disregarded for purposes of assessing confusing similarity.

Complainant contends that the ONLYFANS Mark is wholly incorporated within the Disputed Domain Name with the addition of the descriptive term “1usd” – in reference to the price which must be paid to allegedly gain unauthorized access to Complainant’s services through the Disputed Domain Name. Complainant further contends that the gTLD “.com” is not to be considered in determining confusing similarity.

Respondent has not contested the assertions by Complainant that the Disputed Domain Name is confusingly similar to the ONLYFANS Mark.

The Panel finds that Complainant has satisfied the elements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy.

Section 2.1 of the WIPO Overview 3.0 states that once Complainant makes a prima facie case in respect of the lack of rights or legitimate interests of Respondent, Respondent carries the burden of demonstrating it has rights or legitimate interests in the Disputed Domain Name. Where Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

Paragraph 4(c) of the Policy allows three non-exclusive methods for the Panel to conclude that Respondent has rights or legitimate interests in the Disputed Domain Name:

(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Disputed Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are 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 ONLYFANS Mark.

Complainant asserts that Respondent has no connection or affiliation with Complainant and has not received any authorization, license or consent, whether express or implied, to use the ONLYFANS Mark in the Disputed Domain Name or in any other manner. Respondent is not commonly known by the Disputed Domain Name and does not hold any relevant trademarks.

Complainant further asserts that Respondent is using a confusingly similar Disputed Domain Name to redirect Internet users to a website offering services in an apparent phishing scheme. UDRP panels have categorically held that use of a domain name for illegal activity can never confer rights or legitimate interests in Respondent, particularly in the cases of counterfeits, replicas or reproductions; phishing; or providing unauthorized access.

The Panel finds that Complainant has made a prima facie showing that Respondent lacks rights and legitimate interests in the Disputed Domain Name and that Respondent has not countered these arguments.

Therefore, Complainant has established the necessary elements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of paragraph 4(a)(iii) of the Policy.

Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name:

(i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to Complainant who is the owner of the ONLYFANS Mark or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Disputed Domain Name; or

(ii) you [Respondent] have registered the Disputed Domain Name in order to prevent the owner of the ONLYFANS Mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Disputed Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the ONLYFANS Mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.

The four criteria set forth in paragraph 4(b) of the Policy are non-exclusive. See, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (“Telstra”). In addition to these criteria, other factors alone or in combination can support a finding of bad faith.

Complainant alleges it sent a cease and desist letter to Respondent on April 20, 2021, through the Porkbun WhoIs contact link. Respondent never responded.

Complainant further asserts that the website to which the Disputed Domain Name resolves contains a logo that is identical to Complainant’s registered Logo. Complainant further asserts that this is evidence that Respondent had actual knowledge of Complainant’s rights in the ONLYFANS Mark when Respondent registered the Disputed Domain Name.

The Panel finds that Complainant has alleged a phishing scheme by Respondent which is in violation of paragraph 4(b)(iv) of the Policy.

In addition, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the ONLYFANS Mark, used an identical logo to that of Complainant and used a privacy service to mask Respondent’s true identity. Each of these are additional indications of bad faith.

Therefore, Complainant has satisfied the requirement of paragraph 4(a)(iii) of the Policy.

7. Decision

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 <onlyfans1usd.com> be cancelled.

Richard W. Page
Sole Panelist
Date: August 13, 2021