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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fenix International Limited v. Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf / james Maxwell

Case No. D2021-3426

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 / james Maxwell, Pakistan.

2. The Domain Name and Registrar

The disputed domain name <onlyfansin.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 October 15, 2021. On October 18, 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 to the Complainant on October 25, 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 25, 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 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 16, 2021. The Response was filed with the Center on November 19, 2021.

The Center appointed Luca Barbero as the sole panelist in this matter on December 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 owns and operates a social media platform at <onlyfans.com> - registered on January 29, 2013 - that allows users to post and subscribe to audiovisual content worldwide.

The Complainant is the owner of several trademark registrations for ONLYFANS, including the following, as per trademark certificates submitted as Annex C to the Complaint:

- European Union trademark registration No. EU017946559 for ONLYFANS (figurative mark), filed on August 22, 2018, and registered on January 9, 2019, in classes 9, 35, 38, 41, and 42;

- European Union trademark registration No. EU017912377 for ONLYFANS (word mark), filed on June 5, 2018, and registered on January 9, 2019, in classes 9, 35, 38, 41, and 42;

- United States trademark registration No. 5769267 for ONLYFANS (word mark), filed on October 29, 2018 and registered on June 4, 2019, in international class 35;

- United States trademark registration No. 5769268 for ONLYFANS.COM (word mark), filed on October 29, 2018, and registered on June 4, 2019, in international class 35.

The disputed domain name <onlyfansin.com> was registered on August 25, 2020 and is redirected to a website reproducing the Complainant’s figurative trademark cited above, imitating the look and feel of a prior version of the Complainant’s website and requiring users to type their account name to sign to their account.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the trademark ONLYFANS in which the Complainant has rights as it reproduces the trademark in its entirety with the mere addition of the geographical indicator “in”, which would stand for India, and the generic Top-Level Domain (gTLD) “.com”.

With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that the Respondent is in no way connected to, or affiliated with, the Complainant and has never received any authorization, license, or consent, whether express or implied, to use the disputed domain name.

The Complainant contends that the Respondent is also not commonly known by the disputed domain name and that, given the Complainant’s world renown, it must have undoubtedly been aware of the Complainant when registering the disputed domain name, especially considering the disputed domain name resolves to a website which reproduces entirely the Complainant’s logo and website content.

Moreover, the Complainant highlights that the Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services since it included a logo on its website that is identical to the Complainant’s registered trademark and has apparently attempted to create an impression of affiliation with the Complainant, whilst using the disputed domain name to illegally obtain credentials of users who subscribed to the Complainant’s website.

With reference to the circumstances evidencing bad faith, the Complainant indicates that, considering its registration of the ONLYFANS trademark long predates the Respondent’s registration of the disputed domain name, that the disputed domain name is confusingly similar to the Complainant’s prior well-known trademark and that the Respondent published on its website a logo identical to that of the Complainant, the Respondent registered the disputed domain name to target the Complainant and its trademarks.

The Complainant underlines that the Respondent also clearly registered the disputed domain name to divert Internet traffic from the Complainant’s website to its own website also to benefit financially from the Complainant’s widespread recognition and world renown.

Furthermore, the Complainant informs the Panel that it sent the Respondent a cease-and-desist letter on September 24, 2021, demanding that the Respondent stop using and transfer the disputed domain name, but the Respondent failed to respond to the letter, which would be further evidence of bad faith.

B. Respondent

The Respondent denies the Complainant’s allegation that that website is being used for phishing purposes and alleges that its website “does not store any info or is capable of storing even a single email address”.

The Respondent states that, in a private conversation with the Complainant, it offered to remove the ONLYFANS logo from its website, but the Complainant rejected such offer, requesting the cancellation of the disputed domain name. The Respondent further states that it did not comply with the cancellation request because it paid for the disputed domain name and does not want anyone else to register or misuse it.

The Respondent informs the Panel that it would be available to remove all content from its site if it could keep the disputed domain name.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests 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

The Panel finds that the Complainant has established rights over the trademark ONLYFANS based on the trademark registrations cited under section 4 above and the related trademark certificates submitted as Annex C to the Complaint.

It is well accepted that the first element functions primarily as a standing requirement, and that the threshold test for confusing similarity involves a reasoned but relatively straightforward comparison between a complainant’s trademark and the disputed domain name to assess whether the trademark is recognizable within the disputed domain name (section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Moreover, 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 (section 1.8 of the WIPO Overview 3.0). Furthermore, the applicable Top-Level Domain (“TLD”) in a domain name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (section 1.11.1 of the WIPO Overview 3.0).

In the case at hand, the Panel finds that the disputed domain name is confusingly similar to the trademark ONLYFANS as it reproduces the trademark in its entirety with the sole addition of the two-letter term “in”, which could be interpreted as a geographical indicator for India, and the gTLD “.com”, which do not prevent a finding of confusing similarity.

Therefore, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

It is well established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the domain name according to paragraph 4(a)(ii) of the Policy is potentially onerous, since proving a negative can be difficult considering such information is often primarily within the knowledge or control of the Respondent.

Accordingly, in line with previous UDRP decisions, it is sufficient that the Complainant show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see, i.e., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,

In the case at hand, the Complainant has made a prima facie case and the Respondent has failed to raise any convincing circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. The Panel notes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks.

Furthermore, there is no indication before the Panel that the Respondent is commonly known by the disputed domain name, has made preparations to use the disputed domain name in connection with a bona fide offering of goods or services, or that it intends to make a legitimate, non-commercial or fair use of the disputed domain name, and the Respondent has not provided in the Response any convincing evidence to the contrary, as it merely denied the Complainant’s contentions without providing any explanation as to the reasons why it registered the disputed domain name.

Indeed, since the disputed domain name has been pointed to a website substantially identical to the one of the Complainant, reproducing the Complainant’s figurative trademark and requesting users to type their account names, the Panel finds that the Respondent is clearly impersonating the Complainant and also attempting to obtain users’ personal information by inducing them to believe that they are accessing the Complainant’s website. As held in section 2.13.1 of the WIPO Overview 3.0, prior panels have held that the use of a domain name for impersonation/passing off can never confer rights or legitimate interests on a respondent.

Therefore, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the disputed domain name according to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered and is being used by the Respondent in bad faith.

The Panel finds that, in light of i) the prior registration and use of the Complainant’s trademark ONLYFANS in connection with the Complainant’s social media platform at <onlyfans.com>; ii) the confusing similarity of the disputed domain name with the trademark ONLYFANS; and iii) the Respondent’s pointing of the disputed domain name to a website featuring the Complainant’s figurative trademark and imitating the look and feel of the Complainant’s website, the Respondent very likely registered the disputed domain name having the Complainant’s trademarks in mind.

Moreover, the Panel also finds that, in view of the use of the disputed domain name to divert users to the website described above, the Respondent engaged in an intentional attempt to pass itself off as the Complainant and attempted to attract Internet users to its website, likely for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of its website, according to paragraph 4(b)(iv) of the Policy.

See, along these lines, Instagram, LLC v. Contact Privacy Inc. Customer 0154295130 / Carlos Alberto Bejarano, WIPO Case No. D2019-1089: “the disputed domain name resolved to a web page evidently intended to confuse Internet users into believing that it was the online login portal for the Complainant’s Instagram website, it is clear that the disputed domain name was registered for this purpose. (…) The use to which the Respondent has previously put the disputed domain name falls precisely within paragraph 4(b)(iv). The belief of Instagram users encountering the Respondent’s website that they had reached the login portal for the Complainant’s Instagram website will have been reinforced because of the confusing similarity between the disputed domain name and the Complainant’s INSTAGRAM trade mark. Moreover, as explained above, the use of a domain name for per se illegitimate activity can never confer rights or legitimate interests on a respondent and is considered evidence of bad faith. See section 3.1.4 of the WIPO Overview 3.0”.

Therefore, the Panel finds that the Complainant has proven that the Respondent registered and is using the disputed domain name in bad faith according to paragraph 4(a)(iii) of the Policy.

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 <onlyfansin.com> be cancelled.

Luca Barbero
Sole Panelist
Date: January 3, 2022

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