WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fenix International Limited v. Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf / Rajav Rai
Case No. D2021-3181
1. The Parties
The Complainant is Fenix International Limited c/o Walters Law Group, United States of America (the “United States”).
The Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland / Rajav Rai, Nepal.
2. The Domain Name and Registrar
The disputed domain name <exclusiveonlyfans.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2021. On September 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 27, 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 October 4, 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 October 5, 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 October 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 1, 2021.
The Center appointed Knud Wallberg as the sole panelist in this matter on November 14, 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 a company that is incorporated in the United States and which 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. 017902377, registered on January 9, 2019, in classes 9, 35, 38, 41, and 42, and United States trademark registration No. 5,769,268, registered on June 4, 2019, in class 35.
The Complainant registered the domain name <onlyfans.com> on January 29, 2013.
The disputed domain name was registered on on April 12, 2021. The disputed domain name resolves to a website with adult content.
5. Parties’ Contentions
The Complainant asserts that the disputed domain name is confusingly similar to its ONLYFANS mark. The disputed domain name consists of the Complainant’s exact mark with the addition of the descriptive term “exclusive” as prefix, 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 name. 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 name. On the contrary, the Respondent is using the disputed domain name to offer services that are not only in direct competition with the Complainant´s services, but which, according to the Complainant, alleges to offer content that is pirated from the Complainant’s website for those users that “Unlock all content” by completing surveys.
The Complainant finally asserts that the disputed domain name was registered and is being used in bad faith. The Complainant’s marks have been recognized in numerous previous UDRP proceedings as having “achieved global fame and success in a short time”, which implies that the Respondent either knew or ought to have known of the Complainant’s marks when he registered the disputed domain name. In addition, the Respondent uses the disputed domain name to offer services in direct competition with the Complainant and the Respondent even reproduces the Complainant’s logo on the website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
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 disputed domain name comprises the Complainant’s ONLYFANS trademark in its entirety together with the term “exclusive”. The addition of a term does not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9. The gTLD “.com” is a standard registration requirement and as such is disregarded under the first element confusing similarity test. See section 1.11.1 of WIPO Overview 3.0.
The Panel therefore finds that the conditions in paragraph 4(a)(i) of the Policy are fulfilled in relation to the disputed domain name.
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 name.
The Respondent has not produced, 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 name on the part of the Respondent in these proceedings. The Respondent is using the confusingly similar disputed domain name to direct Internet users to its website where it displays the Complainant’s logo and offers access to content in direct competition with the Complainant. Not only does the construction of the disputed domain name itself risk an implied affiliation to the Complainant, but the content further reinforces said association, when none exists. Accordingly, such use is not a bona fide offering of goods or services, nor does such use constitute fair use.
The Panel there finds that the conditions in paragraph 4(a)(ii) of the Policy are fulfilled in relation to the disputed domain name.
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 disputed 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 name has been registered and is 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 its exact replication in both the construction of the disputed domain name and also on the website at the disputed domain name, it is inconceivable to the Panel that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant’s marks.
The Panel therefore finds that the disputed domain name was registered in bad faith.
The disputed domain name is used for a website that purports to offer services that are similar to the services that are offered by the Complainant, and the website even contains a reproduction of the Complainant’s registered logo. The Panel therefore finds that the Respondent intentionally attempts to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website (see WIPO Overview 3.0, section 3.1.4).
The Respondent’s failure to file participate in these proceedings and use of a privacy service to hide its identity are further indicia of the Respondent’s bad faith.
The Panel there finds that the conditions in paragraph 4(a)(iii) of the Policy are fulfilled in relation to the disputed domain name.
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, <exclusiveonlyfans.com>, be cancelled.
Date: November 28, 2021