The Complainant is Fenix International Limited c/o Walters Law Group, United States of America (“United States”).
The Respondent is Domain Administrator, Privacy Guardian, United States / Shan Talpur, Pakistan.
The disputed domain name <onlyfansleaksdaily.com> is registered with NameSilo, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 19, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. Also on the same day, 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 August 23, 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 also on August 23, 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 August 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 16, 2021. On August 27 and 30, 2021, the Center received informal communications from the Respondent. Upon request from the Complainant, the proceedings were suspended on September 9, 2021. Also upon request from the Complainant, the proceedings were reinstituted on October 14, 2021. The due date for Response was recalculated as October 20, 2021. No further communications were received from the Respondent. Pursuant to paragraph 6 of the Rules, on October 22, 2021, the Center notified the Parties that it would proceed with the Commencement of Panel Appointment Process.
The Center appointed Eva Fiammenghi as the sole panelist in this matter on October 28, 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.
Complainant owns and operates the website located at the domain <onlyfans.com> and has used its domain for several years in connection with the provision of a social media platform that allows users to post and subscribe to audiovisual content on the World Wide Web.
By 2021, <onlyfans.com> is one of the most popular websites in the world. According to Alexa Internet, it is the 379th most popular website on the World Wide Web, and it is the 213th most popular website in the United States.
The Complainant is the owner of several trademark registrations that consist of or contain the words “only fans”, which have been registered in some countries. Amongst others, the Complainant holds the European Union trademark registration 017946559 ONLY FANS filed on August 22, 2018, and registered on January 9, 2019.
The Complainant is the registrant of the domain name <onlyfans.com>, which was registered on January 29, 2013.
The disputed domain name <onlyfansleaksdaily.com> was registered on May 3, 2021. At the time of filing of the Complaint, the disputed domain name resolved to a website featuring the Complainant’s trademark, logo, and content allegedly pirated from the users of the Complainant’s website.
The Complainant argues that the disputed domain name is confusingly similar to its ONLY FANS trademark as it incorporates the whole trademark.
As numerous prior UDRP panels have recognized, the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. The addition of other terms in the domain name may not affect a finding that the domain name is identical or confusingly similar to the complainant’s registered trademark. (NG Biotech v. Whois Agent, Domain Protection Services, Inc. / Patrice SARDA, WIPO Case No. D2021-0177).
The Respondent is not affiliated with the Complainant and there is no evidence to suggest that the Respondent has registered the disputed domain name with rights or legitimate interests.
The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name including its trademarks.
Complainant also sent to Respondent a cease and desist letter on June 24, 2021, demanding to stop the use of disputed domain name and transfer it to the Complainant, but the Respondent did not reply.
The Complainant requests that the disputed domain name be cancelled.
The Respondent did not reply to the Complainant’s contentions.
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(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 was registered and is being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
In the present case, the disputed domain name incorporates the Complainant’s registered trademark ONLY FANS.
It is established that the addition of a term (such as here the words “leaks” and “daily”) do not prevent the confusing similarity (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
The Panel therefore concludes that the disputed domain name <onlyfansleaksdaily.com> is confusingly similar to the Complainant’s trademark ONLY FANS.
The Panel finds the first element of the Policy has, therefore, been met.
According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. See section 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Respondent is not in any way affiliated with the Complainant, nor has the Complainant authorized or licensed the Respondent to use its trademark, or to seek registration of any domain name incorporating the ONLY FANS trademark.
The Respondent has not demonstrated that it has rights or legitimate interests in the disputed domain name. The Complainant contends that there is no relationship with the Respondent that gives rise to any license, permit, or other right to which the Respondent could enjoy such use of any domain name incorporating the Complainant’s ONLY FANS trademark, and the Respondent failed to prove the contrary.
The Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Rather, the Respondent has used the disputed domain name to host a website impersonating the Complainant and hosting content allegedly pirated from the Complainant’s website, in direct competition with the Complainant’s services, and thus such use cannot constitute a bona fide or legitimate noncommercial or fair use of the disputed domain name.
Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Complainant has established a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name.
On the record, the Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy.
The Panel believes that the Respondent must have been aware of the fame of the Complainant’s ONLY FANS trademark at the time of the registration of the disputed domain name, since the Respondent incorporated the entirety of the Complainant’s trademark in the construction of the disputed domain name itself, used a logo that is similar to Complainant’s ONLYFANS logo, and directs users to a commercial website that offers goods and services in direct competition with the Complainant.
The Respondent, by using the disputed domain name, is intentionally misleading Internet users and confusing them trying to attract them to the website at the disputed domain name, making them believe that the website and the services offered on it are associated with the Complainant.
The Panel finds that the Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to the website at the disputed domain name, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website and of the products/services on the website (Policy, paragraph 4(b)(iv)).
Accordingly, pursuant to paragraph 4(b) of the Policy, this Panel finds that disputed domain name was registered and has been used in bad faith by the Respondent.
On this basis the Panel finds that the Complainant has satisfied the third and last point of the Policy, paragraph 4(a)(iii).
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, <onlyfansleaksdaily.com>, be cancelled.
Eva Fiammenghi
Sole Panelist
Date: November 11, 2021