WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fenix International Limited c/o Walters Law Group v. Dinesh Agrawal

Case No. D2021-2201

1. The Parties

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

The Respondent is Dinesh Agrawal, India.

2. The Domain Name and Registrar

The disputed domain name <onlyfanshot.com> is registered with Wild West Domains, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2021. On July 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 13, 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 15, 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 15, 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 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 15, 2021. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on August 16, 2021.

The Center appointed Luca Barbero 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 owns and operates a social media platform at <onlyfans.com> registered on January 29, 2013, that allows users to post and subscribe to audiovisual content worldwide.

The Complainant is the owner of several trademark registrations for ONLYFANS, including the following, as per trademark certificates submitted as annexes to the Complaint:

- European Union trademark registration No. 017946559 for ONLYFANS (figurative mark), filed on August 22, 2018 and registered on January 9, 2019, in international classes 9, 35, 38, 41 e 42;

- European Union trademark registration No. 017912377 for ONLYFANS (word mark), filed on June 5, 2018 and registered on January 9, 2019, in International classes 9, 35, 38, 41 e 42;

- United States trademark registration No. 5769267 for ONLYFANS (word mark), filed on October 29, 2018 and registered on June 4, 2019, in international class 35;

- United States trademark registration No. 5769268 for ONLYFANS.COM (word mark), filed on October 29, 2018 and registered on June 4, 2019, in international class 35.

The disputed domain name <onlyfanshot.com> was registered on March 21, 2021 and is pointing to a website offering adult entertainment services and publishing also content taken from the Complainant’s website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that disputed domain name <onlyfanshot.com> is confusingly similar to the trademark ONLYFANS in which the Complainant has rights as it reproduces the trademark in its entirety with the mere addition of the descriptive term “hot” and the generic Top-Level Domain (“gTLD”) “.com”.

With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that the Respondent is in no way connected or affiliated with the Complainant and has never received any authorization, license, or consent, whether express or implied, to use the disputed domain name.

The Complainant states that the Respondent is not commonly known by the disputed domain name and that, given the Complainant’s world renown, it must had undoubtedly been aware of the Complainant when registering the disputed domain name.

The Complainant also asserts that the Respondent has no rights or legitimate interests in the disputed domain name since the website at the disputed domain name is in direct competition with the Complainant’s services, providing entertainment services in the nature of a website featuring non-downloadable video, photographs, images and audio, as well as some adult entertainment contents.

Moreover, the Complainant asserts that the disputed domain name appears to contain pirated content taken from the Complainant’s website, which would be further proof of the fact that the Respondent knew about the Complainant when registering the disputed domain name.

The Complainant further submits that the Respondent’s pointing of the disputed domain name to a website providing pirated content taken from the Complainant’s website free of charge ad displaying a logo that is similar to the Complainant’s registered logo, does not amount to a legitimate non-commercial or fair use of the disputed domain name.

With reference to the circumstances evidencing bad faith, the Complainant indicates that, considering its registration of the ONLYFANS trademark long predates the Respondent’s registration of the disputed domain name, that the Respondent published on its website a logo similar to that of the Complainant, that disputed domain name is confusingly similar to the Complainant’s registered mark, that the content published at the disputed domain name is in direct competition with the content of the Complainant’s own website and that the Respondent’s website also includes pirated content from the Complainant’s own website, there is no reason to believe that the Respondent could have registered the disputed domain name in good faith, if not to target the Complainant and its trademarks.

Moreover, the Complainant emphasizes that it sent the Respondent a cease-and-desist letter, on May 13, 2021, demanding that the Respondent stop using the disputed domain name and publishing pirated content, but the Respondent failed to respond to the letter, which would be further evidence of bad faith.

The Complainant underlines that the Respondent also clearly registered the disputed domain name in bad faith to divert Internet traffic from the Complainant’s site to its website, offering adult entertainment content, including pirated content from the Complainant’s website, in direct competition with the Complainant’s website.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain name registered by the Respondent 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 Panel finds that the Complainant has established rights over the trademark ONLYFANS based on the trademark registrations cited under section 4 above and the related trademark certificates submitted as annex E to the Complaint.

It is well accepted that the first element functions primarily as a standing requirement, and that the threshold test for confusing similarity involves a reasoned but relatively straightforward comparison between a complainant’s trademark and the disputed domain names to assess whether the trademark is recognizable within the disputed domain name (section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Moreover, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element (section 1.8 of the WIPO Overview 3.0). Furthermore, the applicable gTLD in a domain name is viewed as a standard registration requirement and as such is disregarded

under the first element confusing similarity test (section 1.11.1 of the WIPO Overview 3.0).

In the case at hand, the Panel notes that the disputed domain name is confusingly similar to the trademark ONLYFANS as it reproduces the trademark in its entirety with the sole addition of the term “hot” and the gTLD “.com” which do not prevent a finding of confusing similarity.

Therefore, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

In the case at hand, by not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.

Moreover, it has been repeatedly stated that when a respondent does not avail himself of its right to respond to a complaint it can be assumed, in appropriate circumstances, that the respondent has no rights or legitimate interests in the disputed domain name (Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269).

The Panel notes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks. Furthermore, there is no indication before the Panel that the Respondent might be commonly known by the disputed domain name.

As mentioned above, the disputed domain name has been pointed to a website publishing content in direct competition to the one published on the Complainant’s website as well as content directly taken from the Complainant’s website under the domain name <onlyfans.com>.

In view of the above-described use of the disputed domain name, the Panel finds that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate non-commercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark.

Therefore, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the disputed domain name according to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered and is being used by the Respondent in bad faith.

In the case at hand, the Panel notes that, in light of the prior registration and use of the trademark ONLYFANS in connection with the Complainant’s services, provided via the website at the domain name <onlyfans.com> and in view of the Respondent’s publication, on the website at the disputed domain name, of content in direct competition with the Complainant and also taken from the Complainant’s website, the Respondent clearly registered the disputed domain name with the trademark ONLYFANS in mind.

The Panel also finds that, in view of the use of the disputed domain name to divert users to the website described above promoting the Respondent’s services identical to those of the Complainant, the Respondent intentionally attempted to attract Internet users to its website, for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its website and the services provided therein, according to paragraph 4(b)(iv) of the Policy.

Moreover, in accordance with prior UDRP decisions, the Panel also finds that a failure to respond to a cease-and- desist letter can be further evidence of bad faith. See, e.g., Spyros Michopoulos S.A. v. John Tolias, ToJo Enterprises, WIPO Case No. D2008-1003, in which the Panel stated: “Any such bad faith is compounded when the Domain Name owner upon receipt of notice that the Domain Name is identical or confusingly similar to a registered trademark, refuses to respond. Such conduct is not consistent with what one reasonably would expect from a good faith registrant accused of cybersquatting.”

Therefore, the Panel finds that the Complainant has also proven that the Respondent registered and has been using the disputed domain name in bad faith according to 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 <onlyfanshot.com> be cancelled.

Luca Barbero
Sole Panelist
Date: September 10, 2021