WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fenix International Limited v. Privacy Service Provided by Withheld for Privacy ehf / Andrei Ivanov
Case No. D2021-3384
1. The Parties
The Complainant is Fenix International Limited c/o Walters Law Group, United States of America.
The Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / Andrei Ivanov, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <onlyfanspics.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 October 12, 2021. On October 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, 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 October 18, 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 also on October 18, 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 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 9, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 11, 2021.
The Center appointed Jeremy Speres as the sole panelist in this matter on November 16, 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 has, since 2016, operated a subscription based social media platform under its ONLYFANS mark at the domain name <onlyfans.com> that allows users to post and subscribe to audio-visual content. As at the filing of the Complaint, the Complainant’s website ranked as the 379th most popular website according to Alexa.
The Complainant has registered rights in the ONLYFANS mark in many territories. Most relevant for this matter, the Panel has independently established that the Complainant owns International Registration No. 1507723 for the word mark ONLYFANS, with a registration date of November 2, 2019, designating, amongst others, the Respondent’s alleged location based on the disclosed WhoIs information - the Russian Federation.
The Domain Name was registered on February 15, 2021, and, as at the filing of the Complaint and the drafting of this Decision, resolved to a website featuring adult content.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to its ONLYFANS mark, that the Respondent has no rights or legitimate interests in it, and the Domain Name was registered and has been used in bad faith given that the Respondent has a history of cybersquatting, including targeting the Complainant, and the Domain Name has been used for competing services taking unfair advantage of the Complainant’s well-known mark for commercial gain.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Where the trade mark is recognisable in the domain name, the addition of other terms does not prevent a finding of confusing similarity (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.8). The Complainant’s mark is the first and most distinctive element of the Domain Name, and the remainder, apart from the generic Top-Level Domain (“gTLD”), consists of the term “pics”, which does not prevent a finding of confusing similarity under the first element.
The Complainant has satisfied the standing requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant’s mark was registered (including in the Respondent’s territory) and well known in many jurisdictions prior to registration of the Domain Name, as confirmed in numerous UDRP cases (e.g. Fenix International Limited v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2020-3447).
The Domain Name is confusingly similar to the Complainant’s mark, the Complainant has claimed that the Domain Name is unauthorised by it, the Respondent did not file a Response, and there is no evidence that any of the circumstances set out in paragraphs 4(c)(ii) and (iii) of the Policy pertain.
Regarding paragraph 4(c)(i) of the Policy, in the circumstances of this case it is highly unlikely that the Respondent sought, in good faith, to rely on the semantic value of the Domain Name rather than the brand value of the Complainant’s trade mark. Firstly, the Respondent has been found to have targeted the Complainant in two prior cases under the Policy. See Fenix International Limited c/o Walters Law Group v. Andrei Ivanov, WIPO Case No. D2021-1284; and Fenix International Limited v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Andrei Ivanov, WIPO Case No. D2021-1339. In the former case, the Respondent was found to have reproduced content sourced from the Complainant’s website, clearly showing familiarity with the Complainant.
Secondly, the Domain Name has been used for content that competes directly with the Complainant, and the Domain Name incorporates the term “pics” that is descriptive of the Complainant’s well-known business. This is likely to lead to an assumption of affiliation with or sponsorship by the Complainant and, taken together with the Respondent’s history of targeting the Complainant, indicates that the Respondent sought to capitalise on the Complainant’s reputation for its own commercial gain.
The Complainant has thus made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name, the burden of production shifts to the Respondent (WIPO Overview 3.0 at section 2.1), and given that no Response was filed, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names incorporating the mark plus a descriptive term as in this case) to a famous or well-known trade mark by an unaffiliated entity can by itself create a presumption of bad faith (WIPO Overview 3.0 at section 3.1.4). That presumption is not rebutted here.
In addition to the two cases cited above involving targeting of the Complainant, the Panel has independently established that the Respondent has been the unsuccessful respondent in eleven other cases decided under the Policy. In light of this and the facts discussed above, it is clear that the Respondent is a serial cybersquatter and this case is merely a continuation of that pattern.
The Panel draws adverse inferences from the Respondent’s use of a privacy service and the provision of false contact information (WIPO Overview 3.0 at section 3.6), as well as the Respondent’s failure to take part in the present proceeding where an explanation is certainly called for (WIPO Overview 3.0 at section 4.3).
The Complainant has satisfied paragraph 4(a)(iii) of the Policy.
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, <onlyfanspics.net>, be transferred to the Complainant.
Date: November 30, 2021