WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fenix International Limited v. Domain Administrator, See PrivacyGuardian.org / John Silver, Domain Administrator, See PrivacyGuardian.org / James Peterson
Case No. D2021-2272
1. The Parties
Complainant is Fenix International Limited c/o Walters Law Group, United States of America (“United States”).
Respondent is Domain Administrator, See PrivacyGuardian.org, United States / John Silver and James Peterson, United States.
2. The Domain Name and Registrar
The disputed domain names <fancelebs.com> and <trendingonlyfans.com> (the “Domain Names”) are registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2021. On July 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On July 14, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 16, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 16, 2021.
The Center verified that the Complaint together with the amended 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 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 11, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 18, 2021.
The Center appointed Robert A. Badgley as the sole panelist in this matter on August 31, 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 owns and operates a website at <onlyfans.com> to provide a social media platform on which users may post and subscribe to audiovisual content on the Internet. Such content includes adult content, according to a cease-and-desist letter sent on Complainant’s behalf and submitted into the record here. According to Alexa Internet, the <onlyfans.com> site is the 379th most popular site worldwide on the Internet and the 213th most popular site in the United States in 2021.
Complainant holds various trademark registrations, including a United States Patent and Trademark Office (“USPTO”) registration for the word trademark ONLYFANS, USPTO Reg. No. 5,769,267 registered on June 4, 2019, in connection with “arranging subscriptions of the online publications of others,” with a July 4, 2016 date of first use in commerce. Complainant also holds European Union Intellectual Property Office Reg. No. 017912377, registered on January 9, 2019, for the word mark ONLYFANS in connection with various goods and services in various classes, including (in Class 41):
“Providing entertainment services, namely, providing a website featuring non-downloadable video, photographs, images, audio, and text via a global computer network; providing computer, electronic and online databases in the field of entertainment and in the fields of social and community interest groups, specifically sporting, fitness and entertainment community interest groups; electronic journals and web logs featuring user generated or specified content in relation to sporting, fitness and entertainment purposes; electronic publishing services for others.”
The Domain Name <fancelebs.com> was registered on October 8, 2020, and the Domain Name <trendingonlyfans.com> was registered on April 2, 2021. The Domain Names each formerly resolved to a website where Respondent offered subscriptions to adult online content which, according to Complainant, is in “direct competition” with Complainant’s services. Complainant also asserts that some of the content at Respondent’s websites was “pirated” from the content of Complainant’s users. At the date of this decision, the Domain Names each resolves to an error page.
On April 9, 2021, Complainant’s counsel sent a cease-and-desist letter to Respondent in connection with the Domain Name <fancelebs.com>, demanding that Respondent “delete” that Domain Name. It appears that Respondent did not respond to this letter.
5. Parties’ Contentions
Complainant contends that it has satisfied each of the three elements required under the Policy for cancellation, which remedy it has specifically requested, of the Domain Names.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each of the Domain Names:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the trademark ONLYFANS through registration and use demonstrated in the record.
With respect to the Domain Name <trendingonlyfans.com>, the Panel finds the Domain Name confusingly similar to the ONLYFANS mark. This Domain Name entirely incorporates the ONLYFANS mark and adds the word “trending,” which does little to overcome the fact that the mark is clearly recognizable within the Domain Name.
With respect to the Domain Name <fancelebs.com>, however, the Panel cannot conclude that there is confusing similarity between the ONLYFANS mark and the Domain Name. In the Panel’s view, the ONLYFANS mark is not adequately recognizable within the Domain Name.
The word “only” from the mark is entirely missing from the Domain Name. The word “celebs” (a common colloquial shorthand for “celebrities”) is added to the Domain Name, but altogether absent from the trademark. The only commonality between the mark and the Domain Name is the word “fan”, which in the trademark is pluralized and which in the Domain Name is not pluralized.
Complainant argues that the word “fans” is the dominant portion of its ONLYFANS trademark, and that the dominant word “fans” is in fact contained within the Domain Name – albeit interrupted by the word “celeb.” A more natural reading of the Domain Name is that it contains the words “fan” and “celebs,” not the word “fans” interrupted by the word “celeb”. And, again, the Domain Name lacks the word “only,” which word comprises half of the eight characters/two words in the trademark.
In sum, and mindful of the claim of pirated content and the seeming intent of the Respondent as demonstrated by a pattern of registrations here, the Panel is unable to conclude that the trademark ONLYFANS is adequately recognizable within the Domain Name <fancelebs.com>.
The Complaint fails with respect to the Domain Name <fancelebs.com>. Complainant has established Policy paragraph 4(a)(i) with respect to the Domain Name <trendingonlyfans.com>.
As such, the Panel need not discuss the Domain Name <fancelebs.com> under the following two elements and the Domain Name will refer to <trendingonlyfans.com> only unless specifically mentioned.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] are making a legitimate noncommercial 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.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name <trendingonlyfans.com>.
Respondent has not come forward in this proceeding to articulate, much less demonstrate, his bona fides vis-à-vis the Domain Name <trendingonlyfans.com>. It appears from this undisputed record that Respondent is improperly siphoning Internet traffic from Complainant for commercial gain by trading on the renown of Complainant’s ONLYFANS trademark (and offering pirated content as well). See Legislator 1357, Limited, et al. v. Alberta Hot Rods, WIPO Case No. D2008-0832 (transferring <ianfleming.com>; use of a domain name “which intentionally trades on the fame of another cannot constitute bona fide offering of goods or services”).
Complainant has established Policy paragraph 4(a)(ii) with respect to the Domain Name <trendingonlyfans.com>.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Name <trendingonlyfans.com> in bad faith. The Panel incorporates its discussion above in the section 6.B. The Panel finds it clear on this undisputed record that Respondent had Complainant’s trademark in mind when registering the Domain Name <trendingonlyfans.com>. This conclusion is apparent from the fact that the Domain Name entirely incorporates the well-known ONLYFANS mark, and that Respondent offers services in competition with those offered by Complainant under the ONLYFANS mark.
The Panel also concludes that Respondent’s conduct, namely, trading on the fame of the ONLYFANS mark to offer competing services, constitutes bad faith use within the meaning of the above-quoted Policy paragraphs 4(b)(iii) and 4(b)(iv).
Complainant has established Policy paragraph 4(a)(iii) with respect to the Domain Name <trendingonlyfans.com>.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <trendingonlyfans.com> be cancelled.
For the foregoing reasons, the Complaint is denied with respect to the Domain Name <fancelebs.com>.
Robert A. Badgley
Date: September 13, 2021