WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fenix International Limited v. Oleg Zabugrovskiy
Case No. D2021-3386
1. The Parties
The Complainant is Fenix International Limited, United States of America (“United States”), c/o Walters Law Group, United States of America.
The Respondent is Oleg Zabugrovskiy, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <onlyfans-tiktok18.com> is registered with Wix.com Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2021. On October 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 18, 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 in English and Russian to the Complainant on October 21, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.
The Registrar confirmed that the language of the Registration Agreement for the disputed domain name is Russian. On October 21, 2021, the Center sent an email communication to the Parties in English and Russian regarding the language of the proceeding. The Complainant filed an amended Complaint incorporating the request for English as the language of the proceeding on October 26, 2021. The Respondent did not comment on the language of the proceeding.
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 in English and Russian, and the proceedings commenced on November 2, 2021.
In accordance with the Rules, paragraph 5, the due date for Response was November 22, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 25, 2021.
The Center appointed Kateryna Oliinyk as the sole panelist in this matter on December 9, 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>. The website is a social media platform that allows creators of content to monetize the content through a subscription service and develop relationships with their fan base.
According to Alexa Internet Summary for <onlyfans.com>, captured on May 20, 2021, the Complainant's website is the 379th most popular website globally, and it is the 213th most popular website in the United States.
The Complainant holds trademark registrations that comprise the term “onlyfans” in various jurisdictions around the world, including the following:
- European Union Trade Mark Registration No. 17912377 ONLYFANS, word, filed on June 5, 2018 and registered on January 9, 2019, in classes 9, 35, 38, 41 and 42;
- European Union Trade Mark Registration No. 17946559 ONLYFANS, figurative, filed on August 22, 2018 and registered on January 9, 2019, in classes 9, 35, 38, 41, and 42;
- United States Trademark Registration No. 5,769,267 ONLYFANS, word, filed on October 28, 2018 and registered on June 4, 2019, in class 35. First use in commerce is claimed as of July 4, 2016;
- United States Trademark Registration No. 5,769,268 ONLYFANS.COM, word, filed on October 28, 2018 and registered on June 4, 2019, in class 35. First use in commerce is claimed as of July 4, 2016; (collectively the “ONLYFANS trademark”).
Prior UDRP panels have recognized the Complainant’s common law trademark rights in the ONLYFANS mark since 2017 and its first use in commerce since 20161 .
The disputed domain name was created on April 21, 2021 and is used for the website with adult entertainment services and containing the pirated version of video and photo content hacked or leaked from the original Complainant’s website, as well as other sources.
The Complainant sent a cease and desist letter to the Respondent on August 17, 2021 by email, requesting that the Respondent cease using and immediately delete the disputed domain name. The Respondent did not respond.
5. Parties’ Contentions
The Complainant has requested, aware of the possible consequences, that the Administrative Panel appointed in this administrative proceeding order that the disputed domain name be cancelled.
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s ONLYFANS trademark. According to the Complaint, the disputed domain name incorporates the Complainant’s ONLYFANS trademark, with the addition of a hyphen plus a registered trademark of the Complainant’s competitor, TIKTOK, which does nothing to avoid confusing similarity. The use of the "com" generic Top-Level Domain (“gTLD”) does not change the result in the confusing similarity analysis, as it is viewed as a standard registration requirement.
The Complainant contends that the Respondent has no connection to, or affiliation with the Complainant, and that the Respondent has not received any authorization, license, or consent, whether express or implied, to use the trademark in the disputed domain name, or in any other manner.
The Complainant asserts that the Respondent is not commonly known by the ONLYFANS trademark.
The Complainant further states that, once the Complainant asserts that the Respondent has no rights or legitimate interests, the burden of proof then shifts to the Respondent, to provide concrete evidence that it has rights to, or legitimate interest in the domain name at issue. That the Respondent will be unable to provide credible evidence that he has rights to, or legitimate interests in the disputed domain name.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. The disputed domain name was registered long after the Complainant attained right to the ONLYFANS trademark.
The Complainant claims that the Respondent registered the confusingly similar disputed domain name to offer services in direct competition with the Complainant (including content pirated from Complainant’s users), that implies that the Respondent either knew or ought to have known of the Complainant’s ONLYFANS trademark and likely registered the disputed domain name to target the Complainant’s ONLYFANS trademark. The Complainant’s trademarks are internationally well-known amongst the relevant public and registration of a disputed domain name that is confusingly similar to the widely-known ONLYFANS trademark creates a presumption of bad faith.
Further, the Complainant sent a cease-and-desist letter to the Respondent on August 17, 2021, demanding the Respondent to cease using the disputed domain name and to immediately delete the disputed domain name. The Respondent did not respond, thus necessitating the filing of the Complaint. The Respondent has clearly registered the disputed domain name to divert Internet users 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
6.1. Procedural Issue – Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Russian. Paragraph 11(a) of the Rules provides that “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”. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the Parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the Parties and undue delay to the proceeding. (See, e.g., Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191 stating that “[o]ne important consideration of this issue is the fairness to both Parties in their abilities to prepare the necessary documents and protect their own interests”).
The Center has provided both parties with an opportunity to comment on the language of the proceedings by sending both parties a Language of Proceeding notification, as well as other communication in both Russian and English. The Complainant has provided submissions requesting English being the language of the Proceeding.
Considering that both parties have been given fair opportunities to present their cases, the Center allowed the Complaint in English, and allowed the Respondent to produce the Response either in English or Russian, and appointed the Panel familiar with English and Russian languages. All the case-related communication the Center issued both in Russian and English.
The Respondent did not submit the Response to the Complaint.
The Panel takes due note that some part of the content published on the website under the disputed domain name has been adapted to the English speaking audience and this factor indicates that the Respondent, based on the balance of probabilities, is familiar with the English language and can understand it.
In all the circumstances, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should English be adopted as the language of the proceeding.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.
6.2. Substantive Discussion
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) that the disputed 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 disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Ownership of a nationally or regionally registered trademark serves as prima facie evidence that the Complainant has trademark rights for the purposes of standing to file this Complaint. See section 4.13 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Complainant submitted evidence that the ONLYFANS trademark has been registered in the United States and European Union. Thus, the Panel finds that the Complainant’s rights in the ONLYFANS trademark have been established pursuant to the first element of the Policy.
Once the gTLD “.com” is ignored as the standard registration requirement as reflected in section 1.11.1 of the WIPO Overview 3.0, the disputed domain name consists of the whole of the Complainant’s registered ONLYFANS trademark with the addition of a hyphen plus third-party trademark “TIKTOK” followed by the numeral “18”.
Thus, the Panel finds that the Complainant’s ONLYFANS trademark is clearly recognizable within the disputed domain name.
As provided in section 1.8 of the WIPO Overview 3.0, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. Furthermore, under section 1.12. where the complainant’s trademark is recognizable within the disputed domain name, the addition of other third-party marks (i.e., <mark1+mark2.tld>), is insufficient in itself to avoid a finding of confusing similarity to the complainant’s mark under the first element.
Thus, the addition of the elements “TIKTOK” and “18” does not prevent a finding of confusing similarity of the disputed domain name with the Complainant’s ONLYFANS trademark.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the ONLYFANS trademark in which the Complainant has rights.
The Panel therefore holds that the Complainant has satisfied the first element in paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
Based on the Complainant’s contentions, the Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its ONLYFANS trademark.
Based on the case records, the Panel established that the Respondent has not been commonly known by or associated with the domain name, and there is no similarity or association between the name of the Respondent and the disputed domain name.
In the Panel’s view, the use of the disputed domain name by the Respondent does not constitute either bona fide use or a legitimate noncommercial or fair use of the disputed domain name, as it is clearly used to target the Complainant and trade off the goodwill of the ONLYFANS trademark.
The inclusion on the website to which the disputed domain name resolves, of illegally reproduced content taken from the Complainant’s website, cannot be deemed as a bona fide offering of goods and services (see Fenix International Limited v. Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf / Marius Pop, WIPO Case No. D2021-2715, see also section 2.13 of the WIPO Overview 3.0).
And namely, the consensus view among UDRP panels is that the use of a domain name for illegal activity, such as the misappropriation of copyrighted material, cannot confer rights to, or legitimate interests in a domain name (see section 2.13 of the WIPO Overview 3.0; see also Self-Portrait IP Limited v. Franklin Kelly, WIPO Case No. D2019-0283). This is especially true where, as is the case here content previously published at the Complainant’s website is offered free of charge by the Respondent, without renumerating the Complainant or the respective creators. (see Fenix International Limited c/o Walters Law Group v. Marius, WIPO Case No. D2021-1340; Fenix International Limited c/o Walters Law Group v. Andrei Ivanov, WIPO Case No. D2021-1284; Fenix International Limited v. Datos privados, WIPO Case No. D2021-1306; Fenix International Limited v. Tony Lear, midieast corp., WIPO Case No. D2021-1304 (finding no rights of legitimate interests where the respondent “makes available pirated version of content uploaded by the Complainant’s users.”).
In light of the above, the Complainant made a prima facie case that the Respondent lacks rights to or legitimate interests in the disputed domain name. The Respondent did not submit any evidence or arguments to challenge the Complainant’s assertions.
The Panel therefore holds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] web site or location”.
As the Panel established that the Complainant ONLYFANS trademark has been fully incorporated into the disputed domain name, and as the Respondent has misappropriated the original website content of the Complainant to which the Respondent refers on the website, it is the Panel’s view that at the time of the registration of the disputed domain name, the Respondent was well aware of the Complainant’s trademark and of its activity, and that the Respondent has targeted the Complainant, which constitutes opportunistic bad faith (see section 3.2.1 of the WIPO Overview 3.0; see also L’Oréal v. Contact Privacy Inc. Customer 0149511181 / Jerry Peter, WIPO Case No. D2018-1937; Gilead Sciences Ireland UC / Gilead Sciences, Inc. v. Domain Maybe For Sale c/o Dynadot, WIPO Case No. D2019-0980; Dream Marriage Group, Inc. v. Romantic Lines LP, Vadim Parhomchuk, WIPO Case No. D2020-1344; and Valentino S.p.A. v. Qiu Yufeng, Li Lianye, WIPO Case No. D2016-1747).
Previous UDRP panels have found that the mere registration by an unauthorized party of a domain name that is identical to a well-known trademark, can in certain circumstances constitute bad faith in itself (see section 3.1.4 of the WIPO Overview 3.0, see also Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation; Toyota Motor Sales, U.S.A., Inc., Toyota Motor Sales De Mexico, S. De R.L. de C.V. v. Salvador Cobian, WIPO Case No. DMX2001-0006, Ferrari S.p.A. v. Ms. Lee Joohee (or Joo-Hee), WIPO Case No. D2003-0882; Fenix International Limited c/o Walters Law Group v. Juan Anton, Onlyfanx, WIPO Case No. D2021-0837 (“[T]he widespread commercial recognition of the Complainant’s ONLYFANS mark is such that the Respondent, must have knowledge of the trademark before registering the disputed domain name.”).
Respectively, the Panel finds that the Respondent’s website clearly misappropriates the Complainant’s trademark to attract, for commercial gain, the Internet users to the website under the disputed domain name and to divert, through confusion, Internet users away from the official Complainant’s website.
Further, the Complainant sent a cease and desist letter to the Respondent. However, the Respondent did not provide any reply.
The Panel further concludes that failure by the Respondent to answer the Complainant’s cease and desist letter suggests that the Respondent was aware that he has no rights or legitimate interests in the disputed domain name, and that the disputed domain name has been registered and is being used in bad faith. Furthermore, the failure of the Respondent to provide the Response to the Complaint, in the view of the Panel, is another indication of bad faith on the part of the Respondent. See, e.g., Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc., WIPO Case No. D2002-0787; Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330.
For these reasons, this Panel finds that the Respondent’s registration and use of the disputed domain name was in bad faith, pursuant to paragraph 4(b) 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 disputed domain name <onlyfans-tiktok18.com> be cancelled.
Date: December 23, 2021
1 See 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.