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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fenix International Limited c/o Walters Law Group v. Prc Maru

Case No. D2021-3255

1. The Parties

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

The Respondent is Prc Maru, United States.

2. The Domain Name and Registrar

The disputed domain name <onlyfanspremium.site> is registered with Beget LLC (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2021. On October 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 4, 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 8, 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 8, 2021.

The Registrar confirmed that the language of the Registration Agreement for the disputed domain name is Russian. On October 8, 2021, the Center sent an email communication to the Parties in both English and Russian regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on October 8, 2021. The Respondent did not comment on the language of the proceeding.

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”).

Given the provided submissions and circumstances of this case, the Center decided to: 1) accept the Complaint as filed in English; 2) accept a Response in either English or Russian; 3) appoint a Panel familiar with both languages mentioned above, if available.

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint in both English and Russian, and the proceedings commenced on October 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 15, 2021.

The Center appointed Clark W. Lackert as the sole panelist in this matter on December 2, 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 the website located at the domain name <onlyfans.com> and has used its domain name for several years in connection with the provision of a social media platform that allows users to post and subscribe to audiovisual content on the World Wide Web. In providing its services, the Complainant has made extensive use of the ONLYFANS trademark, and has registered this trademark in the European Union, the United Kingdom, and the United States. In addition to its registered trademark rights, the Complainant also owns common law rights in the ONLYFANS trademark through use.

The Respondent registered the disputed domain name on July 29, 2021, after the Complainant’s use and registrations for its trademark.

The disputed domain name resolves to active website displaying Complainant’s trademark and logo, where the Respondent attempted to pass itself off as a website of the Complainant.

B. Respondent

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

6. Discussion and Findings

6.1. Procedural Issue – Language of the Proceedings

The Panel supports the finding of the Center that in view of all the facts, this case should follow the language procedures provided by the Center.

According to the information provided by the Registrar, the language of the registration agreement for the disputed domain name is Russian. Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

The Complainant submitted its Complaint in English, and requests the proceeding to be held in English. The Complainant argues that the Respondent conducts business on the website located at the disputed domain name in English and the disputed domain name includes the English words “only, “fans”, “premium”, and “site”. The Center has sent all its email communications to the Respondent in both English and Russian, and has invited the Respondent to express its views on the language of the proceeding. The Respondent has not responded to this invitation and has thus not objected to the Complainant’s request that the proceedings be held in English.

The Panelist finds in favor of the Complainant based upon the reasons set forth above..

A. Identical or Confusingly Similar

The Complainant has presented evidence of established rights in its trademarks, and these rights precede the registration of the disputed domain name by several years.

A comparison of the Complainant’s ONLYFANS trademark and the disputed domain name <onlyfanspremium.site> verifies that the disputed domain name is identical or confusingly similar to the Complainant’s trademark. “onlyfanspremium” merely duplicates the ONLYFANS trademark, with an added descriptive term “premium” to indicate a higher class of service. The ONLYFANS trademark is recognizable within the disputed domain name and the addition of the term “premium” does not prevent a finding of confusing similarity under the first element. Concerning the word “premium”, see, e.g., RapidShare AG, Christian Schmid v. WhoisGuard, Hyperweb / Sunny Lal, WIPO Case No. D2010- 0889 (transferring <free-rapidshare-premium-accounts.com> to owner of RAPID SHARE trademark).

The TLD portion of the disputed domain name (i.e., “.site”) is merely a technical component that is necessary to register a domain name and does not add distinction. See WIPO Overview 3.0, section 1.11.1. Concerning the TLD “.site” per se, see, e.g., Realm Entertainment Limited v. Ferhat Aydin, WIPO Case No. D2017-1258 (transferring <bets10.site> to owner of BETS10 trademark>).

The requirements of paragraph 4(a)(i) of the Policy have been satisfied.

B. Rights or Legitimate Interests

There is no evidence in the record to rebut the prima facie case presented by the Complainant’s allegations that the Respondent has no right or legitimate interests in and to the disputed domain name.

The requirements of paragraph 4(a)(ii) of the Policy have been satisfied.

C. Registered and Used in Bad Faith

As evidence of bad faith, the Respondent’s fraudulently used the same logo as the Complainant’s on its website at the time of registration of the domain name. This is evidence of bad faith. See, e.g., Fenix International Limited v. Private Whois, Knock Knock WHOIS Not There, LLC / Alberto Sainz, WIPO Case No. D2021-0864, wherein the panel noted: “Respondent’s website contains numerous indicia of fraudulent activity, including unauthorized use of Complainant’s device mark and formatting that imitates Complainant’s business in colors, layout and content.”

In addition, the fraudulent promise by Respondent to obtain for the user of the website a “premium” membership in the Complainant’s services creates a false impression of affiliation or sponsorship. The panel in a similar case, Fenix International Limited v. WhoisGuard Protected, see, e.g., WhoisGuard, Inc. / Yazid Laiss / Stive Belb / Ahmed Bel Bouahli, WIPO Case No. D2021-0152 noted: “In the view of the Panel, the remaining four disputed domain names, <onlyfansaccount.xyz>, <onlyfansplus.xyz>, <onlyfans-plus.club> and <onlyfanz.xyz> are inherently misleading as clearly implying a legitimate association or connection with the Complainant.”

Finally, the use of the word “premium” in the disputed domain name coupled with the Complainant’s trademark enhances not reduces confusion. See, e.g., Fenix International Limited v. Datos privados, WIPO Case No. D2021-1306, wherein the panel observed that the addition of the word “filtrados” (“filtered” in English) suggested a false opportunity to access filtered information.

The Panel, therefore, finds that paragraph 4(b)(iv) of the Policy has been satisfied for proving bad faith use and registration. These factors, among others, clearly show an attempt to divert web traffic away from the legitimate website.

The requirements of paragraph 4(a)(iii) of the Policy have been satisfied.

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 <onlyfanspremium.site> be transferred to the Complainant.

Clark W. Lackert
Sole Panelist
Date: December 15, 2021

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