WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fenix International Limited v. c/o whoisprivacy.com / Tulip Trading Company, Tulip Trading Company Limited
Case No. DCO2020-0038
1. The Parties
The Complainant is Fenix International Limited, United Kingdom, represented by Walters Law Group, United States of America (“United States”).
The Respondent is c/o whoisprivacy.com, United States / Tulip Trading Company, Tulip Trading Company Limited, Saint Kitts and Nevis.
2. The Domain Name and Registrar
The disputed domain name <onlyfans.co> is registered with Above.com, Pty Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2020. On July 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 27, 2020, the Registrar transmitted by email to the Center its verification response:
(a) confirming it is the Registrar for the disputed domain name;
(b) disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint;
(c) indicating the language of the registration agreement is English;
(e) acknowledged the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to the disputed domain name.
The Center sent an email communication to the Complainant on July 28, 2020 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 on July 29, 2020.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Policy, 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 August 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 8, 2020.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on September 22, 2020. 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 provides an online service through which users pay to upload their own content and also to view others’ content. Much of the content uploaded is what is described as adult entertainment.
The Complainant registered the domain name <onlyfans.com> from which this service is provided in 2013 but, according to the Complaint, started using it on, and from, July 4, 2016.
According to the Complaint, by May 2017, the Complainant’s service had nearly half a million registered subscribers, “with thousands more joining every day.” By May 2017, the Complainant’s website was receiving several million “hits” per month. In 2020, Alexa ranked the Complainant’s website as the 257th most popular website in the United States and 749 on the World Wide Web.
In addition to the domain name, the Complainant uses the term “Onlyfans” as a word mark and in a fancy or stylized form.
The Complainant has registered:
(a) the plain word mark, ONLYFANS, in:
(i) the European Union, Registered Trademark No. EU017912377. The Complainant applied to register this trademark on June 5, 2018. It was entered on the Register on January 9, 2019 in respect of a range of goods and services in International Classes 9, 35, 38, 41 and 42.; and
(ii) the United States, Registered Trademark No. 5,769,267;
(b) the word mark, ONLYFANS.COM, in the United States, Registered Trademark No. 5,769,268; and
(c) the fancy or sytlised word and device mark, ONLYFANS, in the European Union, Registered Trademark No. EU017946559. The Complainant applied to register this trademark on August 22, 2018. It was also entered on the Register on January 9, 2019 in respect of a range of goods and services in International Classes 9, 35, 38, 41 and 42.; and
The Complainant applied to register both United States trademarks on October 29, 2018. They were both entered on the Register on June 4, 2019 in respect of “Arranging subscriptions of the online publications of others” in International Class 35, claiming a first use in commerce of July 4, 2016.
According to the WhoIs record, the disputed domain name was registered on May 30, 2017. The WhoIs record provided by the Registrar states that the disputed domain name is “taken, Please make an offer”, and includes a button “Make an Offer”.
Printouts included in the Complaint show the disputed domain name resolving to parking type pages with pay-per-click (PPC) advertising.
5. Discussion and Findings
No response has been filed. The Complaint has been sent, however, to the Respondent at the physical and electronic coordinates confirmed as correct by the Registrar in accordance with paragraph 2(a) of the Rules. Bearing in mind the duty of the holder of a domain name to provide and keep up to date correct WhoIs details, therefore, the Panel finds that the Respondent has been given a fair opportunity to present his or its case.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of registered trademarks for ONLYFANS.COM and, in both plain words and a stylised version, ONLYFANS.
The fact that these trademarks were neither applied for, nor registered, before the Respondent apparently registered the disputed domain name on May 30, 2017 is not relevant at this stage of the inquiry although, of course, it may be highly relevant under the second or, particularly, the third issue. See e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 1.1.3.
That consideration is, in any event, irrelevant in this particular case as the Complainant began using its trademarks, including its domain name <onlyfans.com>, almost 12 months before the Respondent apparently registered the disputed domain name. Although the Complainant has not provided the usual indicia of acquired secondary meaning including revenues and advertising expenditures (see e.g. WIPO Overview 3.0, section 1.2), the Panel is satisfied on the basis of the evidence of the number of registered users and “hits” per month that the Complainant had in fact established rights in ONLYFANS and ONLYFANS.COM as unregistered trademarks before the disputed domain name was first registered.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. As with the date of registration or acquisition of the Complainant’s trademark, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. See e.g.WIPO Overview 3.0 , section 1.7.
The disputed domain name is almost identical to the Complainant’s ONLYFANS.COM trademark. As it is permissible to disregard the inclusion in the disputed domain name of the country code Top Level Domain (ccTLD) component as a functional aspect of the domain name system (WIPO Overview 3.0, section 1.11), the disputed domain name is identical to the Complainant’s trademark ONLYFANS.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is identical or confusingly similar with the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.
B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1.
The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it.
The disputed domain name is plainly not derived from the Respondent's name. Nor is there any suggestion of some other name by which the Respondent is commonly known from which the disputed domain name could be derived. From the available record, the Respondent does not appear to hold any trademarks for the disputed domain name.
Printouts included in the Complaint show that the disputed domain name resolved to what appears to be some sort of rotating website including:
(a) <ww17.onlyfans.co> which includes PPC links to “related searches” including “earn money online”, “paid to watch videos”, “paid to click”, “paid to post”, “paid to search”, “paid to promote” and “money making ideas”;
(b) <ww25.onlyfans.co> which includes PPC links to “Unofficial”, “Ceiling Fan Outdoor”, “Ceiling Fans”, “Ceiling Fan”, “Babestation TV”, “Outdoor Ceiling Fans” and “Fanclub”.
When the Panel visited <ww25.onlyfans.co>, the PPC links were to “Bathroom”, “Watch Live Streaming Video”, “Fans”, “Babestation TV”, “Ceiling Fans”, “Bathroom Ceiling Fans” and “Industrial Fans”.
The PPC links on the <ww17.onlyfans.co> website appear to be largely competitive with the Complainant’s service. While some of the PPC links on the <ww25.onlyfans.co> website appear to link to fan products, some such as “Babestation TV” directly compete with the Complainant’s services.
This type of use does not qualify as a legitimate noncommercial use or fair use for the purposes of the Policy.
Rather, as the Complainant points out, such use is not use in good faith under the Policy to qualify as rights or legitimate interests.
These matters, taken together, are sufficient to establish a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not sought to rebut that prima facie case or advance any claimed entitlement. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.
C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd., WIPO Case No. D2010-0470.
Paragraph 4(b) identifies situations which may demonstrate that registration or use of a disputed domain name was not in bad faith under the Policy:
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of [the disputed] domain name in bad faith:
(i) circumstances indicating that [the Respondent] has registered or [the Respondent has] acquired the [disputed] domain name primarily for the purpose of selling, renting, or otherwise transferring the [disputed] 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 Respondent’s] documented out-of-pocket costs directly related to the [disputed] domain name; or
(ii) [the Respondent has] registered the [disputed] 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 Respondent has] engaged in a pattern of such conduct; or
(iii) [the Respondent has] registered the [disputed] domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the [disputed] domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the 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 [the Respondent’s] website or location or of a product or service on [the Respondent’s] web site or location.
It is not clear when the Respondent first began using the disputed domain name as the Wayback Machine records “captures” of the website(s) in 2020 only.
As noted above, however, the only evidence of use of the disputed domain name is to resolve to websites with PPC links, many of which are to services competing with the Complainant’s service. Otherwise, although the Respondent has registered the disputed domain name, it appears to be offering the disputed domain name for sale.
There is no evidence that the Respondent is connected in any way with a business of manufacturing, supplying or installing fan products. On the contrary, the Complainant has identified at least 12 prior decisions in which the Respondent has been found to have registered and used domain names in bad faith under the Policy. These decisions have involved a diversity of products and businesses.
The Complainant contends, therefore, that the Respondent has registered the disputed domain name to take advantage of its significance as the Complainant’s trademark and divert users from the Complainant’s website. The twelve prior decisions illustrate the Respondent engaging in a pattern of such conduct.
The Respondent has not sought to deny or rebut that allegation.
Having regard to the number of users the Complainant’s website was generating by May 2017, the way the Respondent has used the disputed domain name and its pattern of conduct, therefore, the Panel finds that the Respondent registered the disputed domain name in bad faith.
The way the Respondent has been using the disputed domain name in the absence of rights or legitimate interests to do so also constitutes use in bad faith.
Accordingly, the Complainant has established all three requirements under 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.co> be transferred to the Complainant.
Warwick A. Rothnie
Date: October 5, 2020