WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fenix International Limited c/o Walters Law Group v. Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf / rajeev shrestha
Case No. D2021-2076
1. The Parties
The Complainant is Fenix International Limited c/o Walters Law Group, United States of America (“United States”).
The Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland / rajeev shrestha, Nepal.
2. The Domain Name and Registrar
The disputed domain name <onlyfan.shop> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 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 June 30, 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 July 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 July 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 July 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 2, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 6, 2021.
The Center appointed Alfred Meijboom as the sole panelist in this matter on August 24, 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 operates a social media platform at “www.onlyfans.com” where users can post and subscribe to view audiovisual content. The Complainant registered the domain name <onlyfans.com> on January 29, 2013. The Complainant owns, inter alia, the European Union trademark (word) ONLYFANS with registration number 17912377, registered on January 9, 2019, for goods and services in classes 9, 35, 38, 41, and 42; and, International Trademark (word) ONLYFANS with registration number 1507723, registered on November 2, 2019, for goods and services in classes 9, 35, 38, 41, and 42, which designates 576 jurisdictions, including the Unites States (hereinafter the “ONLYFANS Mark”).
It is further undisputed that according to Alexa Internet the Complainant’s “Onlyfans” platform is currently the 379th most popular website on the Internet, and it is the 213th most popular website in the United States.
Prior decisions under the Policy have recognized the Complainant’s unregistered trademark rights in the ONLYFANS mark since 2017 and its first use in commerce since 2016, as well as the global fame and success of the Complainant’s social media platform and the consequent well-known character of the ONLYFANS mark.
The disputed domain name was registered on March 9, 2021, and resolves to a website which offers adult entertainment services including access to pornographic content and the ability to “private message” pornographic actresses in direct competition with the Complainant’s services and to fill out a survey (allegedly as part of a phishing scheme).
5. Parties’ Contentions
The Complainant alleges that the disputed domain name is identical or confusingly similar to the ONLYFANS Mark, the confusing similarity existing where the disputed domain name is a typosquatted version of the ONLYFANS Mark, as the disputed domain name is merely missing the “s”. Further, the use of the generic Top-Level Domain (“gTLD”) “.shop” does not change the result.
The Complainant further alleges that the Respondent has no connection or affiliation with the 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. The Respondent is not commonly known by the ONLYFANS Mark and does not hold any trademarks for the disputed domain name. According to the Complainant, this is all evidence that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant asserts that the Respondent’s use of the disputed domain name to host commercial websites that advertise goods and services in direct competition with the Complainant does not give rise to rights or legitimate interests, and that the Respondent is using an identical or confusingly similar domain name to redirect Internet users to a website offering illegal services, which has been categorically held by Panels under the Policy that use of a domain name for illegal activity can never confer rights or legitimate interests on respondents. According to the Complainant, the Respondent registered and used the disputed domain name not because it refers to or is associated with the Respondent, but because the disputed domain name is identical or confusingly similar to the <onlyfans.com> domain name and ONLYFANS Mark used by the Complainant in association with the Complainant’s services.
The Complainant alleges that the disputed domain name was registered long after the Complainant attained registered rights in the ONLYFANS trademarks and long after the Complainant had unregistered or common law rights in the ONLYFANS trademarks which has acquired distinctiveness that is so strong that the Complainant’s website at “www.onyfans.com” is among the Top 500 most popular websites in the world. The Complainant refers to other Panel decisions which considered the ONLYFANS Mark internationally well known amongst the relevant public, such that the Respondent either knew or ought to have known of the ONLYFANS Mark and likely registered the disputed domain name to target the ONLYFANS Mark. The fact that the disputed domain name is a typosquatted version of the ONLYFANS Marks is of itself evidence of bad faith registration of the disputed domain name. The Complainant sent a cease and desist letter to the Respondent demanding the Respondent stop using and transfer the disputed domain name to the Complainant, to which letter the Respondent did not respond, thus necessitating the filing of the Complaint. According to the Complainant the Respondent’s failure to respond to this correspondence is further evidence of bad faith. The Complainant also alleges that bad faith use is found where the disputed domain name directs users to a commercial website that offers goods and services in direct competition with the trademark owner, and which website allows users to access content from the Complainant’s services by completing surveys in an apparent phishing attempt.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Respondent did not file a Response. However, as set out in section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the consensus view of UDRP panels is that the respondent’s default does not automatically result in a decision in favor of the complainant. The Complainant must still establish each of the three elements required by paragraph 4(a) of the Policy. Although the Panel may draw appropriate inferences from the Respondent’s default, paragraph 4 of the Policy requires the Complainant to support its assertions with actual evidence in order to succeed in this proceeding. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, the panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. The Panel finds that in this case there are no such exceptional circumstances.
Under the Policy, the Complainant must prove that:
(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
It is well established that gTLDs such as “.shop” and “.com”, may typically be disregarded in the assessment under paragraph 4(a)(i) of the Policy (see WIPO Overview 3.0, paragraph 1.11).
The Panel finds that the disputed domain name is confusingly similar to the ONLYFANS Mark. The Respondent has taken the ONLYFANS Mark in its entirety and merely deleted the plural “s” at the end, which does not prevent a finding of confusing similarity between this disputed domain name and the ONLYFANS Mark.
Consequently, the first element of paragraph 4(a) of the Policy is met.
B. Rights or Legitimate Interests
The Complainant must make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent may rebut (e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel takes note of the various allegations of the Complaint and in particular that no authorization has been given by the Complainant to the Respondent to use the ONLYFANS Mark or register the disputed domain name, the Respondent has not been commonly known by the disputed domain name, and the disputed domain name resolves to websites which offers adult content and offers services competing with those of the Complainant, so that there is no bona fide offering of goods and services by the Respondent. The allegations of the Complainant remain unchallenged. There is no evidence before the Panel to show that the Respondent has rights or legitimate interests in the disputed domain name. In contrast, it is unchallenged that the disputed domain name resolves to a website which, inter alia, invites visitors to participate in a survey as part of an apparent phishing scheme. “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing [..]) can never confer rights or legitimate interests on a respondent” (WIPO Overview 3.0, paragraphs 2.13.1 and 3.1.4).
The Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, there is evidence of registration and use of the disputed domain name in bad faith where the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service offered on the Respondent’s website or location.
In the Panel’s view, it is obvious that at the time the Respondent registered the disputed domain name he must have had the ONLYFANS Mark in mind as at that time the ONLYFANS Mark already had acquired substantial distinctiveness and could be considered as a well-known trademark amongst the relevant public (in this sense e.g., Fenix International Limited v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-3447, and Fenix International Limited c/o Walters Law Group v. WhoisGuard, Inc., WhoisGuard Protected / Marry Mae Cerna, WIPO Case No. D2021-0327). Considering that the disputed domain name incorporates the entirety of the Complainant’s trademark, save for the plural “s”, and resolves to a site offering services in direct competition to those of the Complainant, the Panel’s finding on the Respondent’s awareness is only reinforced.
Furthermore, the Panel is satisfied that the Respondent’s use of the disputed domain name for websites which offer adult entertainment services in direct competition with the Complainant’s services do not constitute a bona fide offering of such services, while the Respondent’s offer on the website of the disputed domain name to complete surveys, apparently as part of a phishing scheme, is further indicative of use of the disputed domain name in bad faith.
Consequently, the third and last element of paragraph 4(a) of the Policy is also met.
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 <onlyfan.shop> be cancelled.
Date: September 7, 2021