WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fenix International Limited v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Andrei Ivanov

Case No. D2021-1339

1. The Parties

The Complainant is Fenix International Limited c/o Walters Law Group, United States.

The Respondent is Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Andrei Ivanov, Russian Federation.

2. The Domain Names and Registrar

The disputed domain names <onlyfanspost.com>, <onlyfansxxxvideos.com>, <onlyleakedfans.com>, <onlypornfans.net>, and <previewonlyfans.com> are registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2021. On April 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 30, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 3, 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 on May 3, 2021. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on May 10, 2021.

The Center verified that the Complaint together with the amended Complaints 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 May 11, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 31, 2021. The Respondent filed informal Responses with the Center on May 11, 2021 and June 1, 2021.

The Center appointed Taras Kyslyy as the sole panelist in this matter on June 8, 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 owned, operated, and used the website located at the domain <onlyfans.com> for several years in connection with the provision of a social media platform that allows users to post and subscribe to audiovisual content. The Complainant has made extensive use of the ONLYFANS trademark. In 2021, <onlyfans.com> is the 428th most popular website on the Internet, and it is the 187th most popular website in the United States according to the Alexa Internet Summary for <onlyfans.com>.

The Complainant has registered and common law rights in the ONLYFANS trademark, including for instance European Union trademark registration no. 017912377, registered on January 9, 2019.

The disputed domain names were registered as follows:

<onlypornfans.net> on February 11, 2021;
<onlyleakedfans.com> on February 11, 2021;
<previewonlyfans.com> on February 15, 2021;
<onlyfanspost.com> on March 9, 2021; and
<onlyfansxxxvideos.com> on March 9, 2021.

The disputed domain names resolve to websites with adult sexually explicit content with pornography elements.

The Complainant sent cease-and-desist letters to the Respondent on March 9, 2021, and on April 14, 2021, without any response by the Respondent.

5. Parties’ Contentions

A. Complainant

The disputed domain names are identical or confusingly similar to the Complainant’s trademark. The disputed domain names consist of the Complainant’s exact trademark with the addition of the descriptive words “porn,” “leaked,” “preview,” “post,” “xxx,” and “videos” which does not prevent a finding of confusing similarity. The use of the generic Top-Level Domains (the “gTLDs”) does not serve to distinguish the disputed domain names from the Complainant’s trademark.

The Respondent has no rights or legitimate interests in the disputed domain names. The websites at the disputed domain names are tube sites that host adult entertainment content in direct competition with the Complainant’s services. No evidence indicates that the Respondent is known by the disputed domain names. Because of the Complainant’s global fame and success, the Respondent knew it had no rights or legitimate interests in the disputed domain names. The Respondent registered and used the disputed domain names not because they refer to or are associated with the Respondent, but because the disputed domain names are identical or confusingly similar to the <onlyfans.com> domain name and the Complainant’s trademark used by the Complainant in association with the Complainant’s services.

The disputed domain names were registered and are being used in bad faith. The fact that the Respondent must have been aware of the Complainant’s internationally well-known trademark at the time of registration of the disputed domain names is evidence of bad faith registration. The Respondent registered the confusingly similar disputed domain names to offer services in direct competition with the Complainant, which confirms the Respondent should have been aware of the Complainant’s trademark when registering the disputed domain names. The Respondent hid his identity from the public behind a WhoIs privacy wall. The Respondent failed to respond to the Complainant’s cease-and-desist letters. The Respondent appears to have been a respondent in at least three other UDRP proceedings resulting in transfer of the disputed domain names to the Complainant, since previous panels have found the Respondent exhibits a clear pattern of cybersquatting evidencing bad faith registrations. The Respondent registered the disputed domain names to divert Internet traffic from the Complainant’s site to websites offering adult entertainment content in direct competition with the Complainant’s website.

B. Respondent

In his informal responses, the Respondent commented that the disputed domain names resolve to different type of websites compared to the Complainant’s website. The Respondent also submits that the words “only” and “fans” are common words.

6. Discussion and Findings

A. Identical or Confusingly Similar

According to section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) the applicable gTLD in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Thus, the Panel disregards gTLDs “.net” and “.com” for the purposes of the confusing similarity test.

According to section 1.7 of the WIPO Overview 3.0 in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. In the present case, the Panel finds that the disputed domain names incorporate the entirety of the Complainant’s trademark.

According to section 1.8 of the WIPO Overview 3.0 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. In the present case the Panel finds that the addition of terms “porn”, “leaked”, “preview”, “post”, “xxxvideos” do not prevent establishing the confusing similarity of the disputed domain names to the Complainant’s trademark.

Considering the above the Panel finds the disputed domain names are confusingly similar to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain names.

The Respondent is not commonly known by the disputed domain names, which could demonstrate his rights or legitimate interests (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642).

According to section 2.10 of the WIPO Overview 3.0, UDRP panels have recognized that merely registering a domain name comprised of a dictionary word or phrase does not by itself automatically confer rights or legitimate interests on the respondent; UDRP panels have held that mere arguments that a domain name corresponds to a dictionary term/phrase will not necessarily suffice. In order to find rights or legitimate interests in a domain name based on its dictionary meaning, the domain name should be genuinely used, or at least demonstrably intended for such use, in connection with the relied-upon dictionary meaning and not to trade off third-party trademark rights. UDRP panels also tend to look at factors such as the status and fame of the relevant mark and whether the respondent has registered and legitimately used other domain names containing dictionary words or phrases in connection with the respective dictionary meaning. The Panel finds that in the present case the disputed domain names are not used in connection with the dictionary meaning of the “only fans” words and clearly trade off the rights of the Complainant in its famous trademark.

The Respondent’s use of the confusingly similar disputed domain names on the websites offering services overlapping with the Complainant’s is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use pursuant to the Policy (see, e.g., Option One Mortgage Corporation v. Option One Lending, WIPO Case No. D2004-1052).

Noting the high risk of implied affiliation between the disputed domain names and the well-known trademark of the Complainant, the Panel finds that there is no plausible fair use to which the disputed domain names could be put that would not have the effect of being somehow connected to the Complainant (see, e.g., Instagram, LLC v. Super Privacy Service LTD c/o Dynadot / Zayed, WIPO Case No. D2019-2897).

Considering the above, the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain names. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

According to section 3.1.4 of the WIPO Overview 3.0 the mere registration of a domain name that is identical or confusingly similar to a famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith. The Panel is convinced that the Complainant’s trademark is well established through intensive and widespread use and the Complainant has acquired a significant reputation and level of goodwill in its trademark near worldwide. Thus, the Panel finds that the disputed domain names confusingly similar to the Complainant’s trademarks were registered in bad faith.

According to paragraph 4(b)(iv) of the Policy 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 a domain name in bad faith: by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location. In this case, the disputed domain names confusingly similar to the Complainant’s trademark were used to capitalize on the Internet users’ efforts to find the Complainant. The Panel finds the above confirms the mentioned disputed domain names were also registered and used in bad faith.

The fact that the websites at the disputed domain names provide adult sexually explicit content with pornography elements is a clear indication that the disputed domain names have been registered and used in bad faith (see, e.g., Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022; and Miroglio S.p.A. v. Mr. Alexander Albert W. Gore, WIPO Case No. D2003-0557).

Moreover, the Respondent failed to respond to the Complainant’s cease and desist letter, and did not provide any good reason to justify this, which confirms the bad faith (see, e.g., Compagnie Generale des Etablissements Michelin v. Vaclav Novotny, WIPO Case No. D2009-1022).

Considering the above the Panel finds the disputed domain names were registered and are being used in bad faith. Therefore, the Complainant has established its case under 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 names, <onlyfanspost.com, <onlyfansxxxvideos.com>, <onlyleakedfans.com>, <onlypornfans.net>, and <previewonlyfans.com> be cancelled.

Taras Kyslyy
Sole Panelist
Date: June 9, 2021