WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fenix International Limited v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / dilshan omantha
Case No. D2021-2489
1. The Parties
The Complainant is Fenix International Limited c/o Walters Law Group, United States of America.
The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / dilshan omantha, Sri Lanka.
2. The Domain Name and Registrar
The disputed domain name <onlyfansmega.net> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2021. On August 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 2, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 5, 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 amended Complaint on August 5, 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 the Respondent of the Complaint, and the proceedings commenced on August 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 30, 2021. The Respondent did not submit a response. Accordingly, the Center notified the Respondent’s default on August 31, 2021.
Due to an administrative oversight when sending the notification of the proceedings to the Respondent, the Center granted the Respondent an extension to September 13, 2021, in order for the Respondent to indicate whether it wishes to participate in the proceedings. The Respondent did not submit a response.
The Center appointed Jonas Gulliksson as the sole panelist in this matter on September 20, 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 is the proprietor of, inter alia, the following trademark registrations (the “Registered Marks”):
- European Union trademark registration for ONLYFANS (figurative), reg. No. EU017946559, registered on January 9, 2019;
- European Union trademark registration for ONLYFANS (word), reg. No. EU017912377, registered on January 9, 2019;
- United States service mark registration for ONLYFANS (word), reg. No. 5,769,267, registered on June 4, 2019; and
- United States service mark registration for ONLYFANS.COM (word), reg. No. 5,769,268, registered on June 4, 2019.
The Domain Name was registered on March 30, 2021.
5. Parties’ Contentions
The Complainant alleges, substantially, the following:
Besides the Registered Marks, the Complainant registered the <onlyfans.com> domain name on January 29, 2013. The Complainant has extensive common law rights in the signs corresponding to the Registered Marks since, at latest, July 4, 2016 (the “Common Law Marks”), well before the Domain Name was registered.
The Domain Name is identical or confusingly similar to the Complainant’s Registered Marks and the Common Law Marks.
The Respondent has no connection or affiliation with the Complainant, and has not received any authorization, license, or consent to use the Complainant’s trademarks in the Domain Name or in any other manner. The Respondent is not commonly known by the trademarks and does not hold any trademarks corresponding to the Domain Name. There is no evidence supporting that the Respondent has rights or legitimate interests in the Domain Name. The website to which the Domain Name resolves offers adult entertainment content in direct competition with the Complainant’s services.
The Domain Name was registered and is being used in bad faith. The Domain Name was registered long after the Complainant attained right to the Registered Marks and the Common Law Marks. The strength of these trademarks’ distinctiveness has made the Complainant’s website among the top 500 most popular websites in the world. The Complainant’s trademarks are internationally well-known amongst the relevant public in such a manner that the Respondent either knew or ought to have known of the Complainant’s trademarks and likely registered the Domain Name to target the Complainant’s trademarks. Further, the Complainant sent a cease-and-desist letter to the Respondent on June 24, 2021, demanding the Respondent to stop using the Domain Name and to transfer it to the Complainant. The Respondent did not respond, thus necessitating the filing of the Complaint. The Respondent has clearly registered the Domain Name to divert Internet traffic from the Complainant’s website to a website offering adult entertainment content in direct competition with the Complainant’s services.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no right or legitimate interest in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has clearly established that it is the proprietor of several trademark registrations for ONLYFANS in different jurisdictions that were registered prior to the registration of the Domain Name. The Complainant has claimed that, in addition to these Registered Marks, it holds common law trademark rights to signs corresponding to the Registered Marks, arising as a result of its use during a period starting from 2016. Previous UDRP panels have found that the Complainant holds common law trademark rights for signs corresponding to the Registered Marks (see e.g., Fenix International Limited v. c/o who is privacy.com / Tulip Trading Company, Tulip Trading Company Limited, WIPO Case No. DCO2020-0038; Fenix International Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Samuel Walton, WIPO Case No. D2020-3131; and Fenix International Limited v. Domains By Proxy, LLC, Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-3048). Considering such previous UDRP decisions and the evidence presented in the case in this regard, the Panel finds that the Complainant has established that it holds common law trademark rights in signs corresponding to the Registered Marks, which were obtained prior to the registration of the Domain Name.
The Domain Name incorporates the Complainant’s ONLYFANS trademark in its entirety while adding the Greek term “mega”, meaning “large” or “huge”, and with the generic Top-Level Domain (“gTLD”) “.net”. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8, 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. Further, it is well-established that gTLD suffixes are disregarded in the assessment of similarity between a disputed domain name and a complainant’s mark (see section 1.11.1 of the WIPO Overview 3.0). Considering the foregoing, the Panel finds that the Domain Name is confusingly similar to the Complainant’s ONLYFANS trademark.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, a complainant must first make out a prima facie case showing that the respondent lacks rights or legitimate interests in respect of a disputed domain name and then the burden, in effect, shifts to the respondent to come forward with evidence of its rights or legitimate interests, if the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see WIPO Overview 3.0, section 2.1).
In the present case, the Respondent has failed to submit a response. Considering all of the evidence presented in the case, and the Complainant’s contentions that the Respondent has no rights or legitimate interest in the Domain Name, and that the Respondent has not been authorized to use the Complainant’s ONYLFANS trademark, leads the Panel to the conclusion that the Complainant has made out an undisputed prima facie case so that the conditions set out in paragraph 4(a)(ii) of the Policy have been met by the Complainant.
C. Registered and Used in Bad Faith
It is established that Complainant’s trademark rights for ONLYFANS were obtained prior to the registration of the Domain Name. It is further established that the Complainant’s website “www.onlyfans.com”, where its ONLYFANS trademark is displayed, is popular and well-known. This has also been confirmed by previous UDRP panels (see i.a., Fenix International Limited v. Host Master, 1337 Services LLC, WIPO Case No. D2021-0582; and Fenix International Limited v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-3447).
The website to which the Domain Name resolves offers adult entertainment content similar to the services that the Complainant offers. Further, as mentioned above, the Domain Name incorporates the Complainant’s ONLYFANS trademark in its entirety while adding the Greek term “mega”, meaning “large” or “huge”. Therefore, the website to which the Domain Name resolves could be understood by Internet users to be a website, provided by the Complainant, with a larger range of content or services than what is provided through the Complainant’s website “www.onlyfans.com”. Thus, the Panel concludes that the Respondent, by using the Domain Name, has attempted to attract Internet users, for commercial gain, by creating a likelihood of confusion with the Complainant’s ONLYFANS trademark. Further, the Respondent has failed to respond to the Complainant’s cease-and-desist letter sent on June 24, 2021, which is also an indication of bad faith.
Considering what has been stated above and all the circumstances in the case, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith.
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 <onlyfansmega.net> be cancelled.
Date: October 4, 2021