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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fenix International Limited v. Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf / Andrei Ivanov and Andrue Petr

Case No. D2021-2277

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 / Andrei Ivanov, Russian Federation, and Andrue Petr, Czech Republic.

2. The Domain Names and Registrar

The disputed domain names <onlyfans.kim>, <only-fans.work>, <onlyfanstars.com> and <onlygayfans.net> are registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 14, 2021. On July 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 14, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrants and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 3, 2021, providing the registrants 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 the same day. In response to the Center’s further notification regarding multiple registrants, the Complainant filed an amended Complaint on September 7, 2021.

The Center verified that the Complaint together with the amendment to the Complaint and 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 the Respondent of the Complaint, and the proceedings commenced on September 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 5, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 6, 2021.

The Center appointed Knud Wallberg as the sole panelist in this matter on November 11, 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 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 Trademark registration No. 017946559, registered on January 9, 2019, in classes 9, 35, 38, 41 and 42 and United States trademark registration No. 5,769,267, 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.kim> on March 9, 2021, the disputed domain name <onlygayfans.net> on March 15, 2021 and the disputed domain names <onlyfanstars.com> and <only-fans.work> on March 23, 2021. All the disputed domain names resolve to websites with adult content.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the disputed domain names are confusingly similar to its ONLYFANS mark. Two of the disputed domain names, namely <onlyfans.kim> and <only-fans.work> consist of the Complainant’s exact mark with the generic Top-Level Domains (“gTLDs”) “.kim” and “.work” respectively and as far as the latter is concerned with the addition of a hyphen between the “only” and the “fans” elements of the mark. The two remaining disputed domain names <onlygayfans.net> and <onlyfanstars.com> consist of the Complainant’s exact mark with the only difference being the insertion of the descriptive term “gay” within the Complainant’s mark in and the descriptive term “stars” after the Complainant’s mark, which does nothing to avoid confusing similarity.

The Complainant further asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has not authorized or permitted the Respondent to use its ONLYFANS marks, nor is the Respondent making any legitimate noncommercial or fair use of the disputed domain names. On the contrary, the Respondent is using the disputed domain names to offer services that are in direct competition with the Complainant’s services.

The Complainant finally asserts that the disputed domain names were registered and are being used in bad faith. The Complainant’s marks have been recognized in numerous previous UDRP proceedings as “internationally well-known amongst the relevant public” such that the Respondent either knew or ought to have known of the Complainant’s marks when the Respondent registered the disputed domain names. In addition, the Respondent uses the disputed domain names to offer services in direct competition with the Complainant. Furthermore, the Complainant states that the Respondent Andrei Ivanov is a serial cybersquatter who repeatedly registers domain names containing third party trademarks without authorization.

B. Respondent

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

6. Discussion and Findings

6.1 Preliminary Issue - Multiple Registrants

The Complainant has submitted a request for consolidation of multiple registrants in the same proceeding. In determining whether a single consolidated complaint can be brought against multiple registrants, panels typically look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario. See section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Based on the evidence submitted, which is not contested by the Respondent, the Panel accepts the Complainant’s contention that the disputed domain names are subject to common control. All four disputed domain names were registered around the same time, i.e., in March 2021 with the same Registrar; three of the disputed domain names were registered by the same person, and the fourth disputed domain name registered by a different registrant has the same fax number as the other three disputed domain names; all of the disputed domain names resolve to the websites containing the very similar layout and look, and reproducing the Complainant’s trademark ONLYFANS.

Considering the above, the Panel accepts that the disputed domain names are subject to common control and thus finds that consolidation would be fair and equitable to all Parties.

6.2 Substantive Issues

According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

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

(i) that the 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 domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name <onlyfans.kim> is identical (in the sense of the Policy) to the Complainant’s registered trademark ONLYFANS since it consists of an identical reproduction of the ONLYFANS mark. The gTLD “.kim” is a standard registration requirement and as such is disregarded under the first element confusing similarity test. See section 1.11.1 of the WIPO Overview 3.0.

The Panel finds that the disputed domain name <only-fans.work> is confusingly similar (in the sense of the Policy) to the Complainant’s registered trademark ONLYFANS since it consists of an identical reproduction of the ONLYFANS mark with the addition of a hyphen between the elements “only” and “fans”. The gTLD “.work” is a standard registration requirement and as such is disregarded under the first element confusing similarity test. See section 1.11.1 of the WIPO Overview 3.0.

The disputed domain names <onlygayfans.net> and <onlyfanstars.com> comprises the Complainant’s ONLYFANS trademark in its entirety together with the terms “gay” and “stars” respectively. The addition of such terms does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview 3.0. Also, the gTLDs “.net” and “.com” are standard registration requirements that are disregarded under the first element confusing similarity test.

The Panel therefore finds that the conditions in paragraph 4(a)(i) of the Policy are fulfilled in relation to all the disputed domain names.

B. Rights or Legitimate Interests

It is clear from the facts of the case that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark and given the circumstances of this case, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names.

The Respondent has not rebutted the Complainant’s prima facie case, and there is no evidence of the types of circumstances set out in paragraph 4(c) of the Policy that might give rise to rights or legitimate interests in the disputed domain names on the part of the Respondent in these proceedings.

The Panel therefore finds that the conditions in paragraph 4(a)(ii) of the Policy are fulfilled in relation to all the disputed domain names.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the complainant to prove both registration and use of the domain name in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances which shall be evidence of registration and use in bad faith:

(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder 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 the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.

Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain names have been registered and are being used in bad faith.

Given the circumstances of the case, in particular the extent of use and reputation of the Complainant’s trademark ONLYFANS, and the Respondent’s use of the Complainant’s trademarks on the websites at the disputed domain names, it is inconceivable to the Panel that the Respondent registered the disputed domain names without prior knowledge of the Complainant and the Complainant’s marks.

The Panel therefore finds that the disputed domain names were registered in bad faith.

The disputed domain names have all been used and are still being used for websites that appear to offer services that are similar to the services that are offered by the Complainant. The Panel therefore finds that the Respondent intentionally attempts to attract, for commercial gain, Internet users to the Respondent’s websites by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites (see WIPO Overview 3.0, section 3.1.4).

The Panel therefore finds that the conditions in paragraph 4(a)(iii) of the Policy are fulfilled in relation to all the disputed domain names.

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 names <onlyfans.kim>, <only-fans.work>, <onlyfanstars.com> and <onlygayfans.net> be cancelled.

Knud Wallberg
Sole Panelist
Date: November 29, 2021

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