WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fenix International Limited v. Privacy Service Provided by Withheld for Privacy ehf / Pablo Espinoza

Case No. D2021-3200

1. The Parties

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

The Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / Pablo Espinoza, Bolivia (Plurinational State of).

2. The Domain Name and Registrar

The disputed domain name <only-mega-packs.com> (the Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 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 September 30, 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 September 30, 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 1, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 21, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 25, 2021.

The Center appointed Nick J. Gardner as the sole panelist in this matter on November 4, 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 that allows users to post and subscribe to audiovisual exclusive, mostly adult, content. The users of this platform pay a subscription fee to see exclusive content and live streaming from their favorite content creators. The Complainant’s social media platform is located at the website “www.onlyfans.com”, which is listed in 2021, according to Alexa Internet, as the 379th most popular website worldwide, and the 213th most popular website in the United Sates.

The Complainant holds trademark registrations that comprise the term “onlyfans” in various jurisdictions around the world, including the following:

- European Union Trademark Registration No. 17,912,377 ONLYFANS, word, registered on January 9, 2019, in classes 9, 35, 38, 41, and 42;

- European Union Trademark Registration No. 17,946,559 ONLYFANS, figurative, registered on January 9, 2019, in classes 9, 35, 38, 41, and 42;

- United States Trademark Registration No. 5,769,267 ONLYFANS, word, registered on June 4, 2019, in class 35;

- United States Trademark Registration No. 5,769,268 ONLYFANS.COM, word, registered on June 4, 2019, in class 35;

- United States Trademark Registration No. 6,253,455 ONLYFANS, word, registered on January 26, 2021, in classes 9, 35, 38, 41, and 42;

- United States Trademark Registration No. 6,253,475 ONLYFANS, figurative, registered on January 26, 2021, in classes 9, 35, 38, 41, and 42;

- United Kingdom Trademark Registration No. 917,912,377 ONLYFANS, word, registered on January 9, 2019, in classes 9, 35, 38, 41 and 42; and

- United Kingdom Trademark Registration No. 917,946,559 ONLYFANS, figurative, registered on January 9, 2019, in classes 9, 35, 38, 41, and 42.

These trademarks are collectively referred to as the “ONLYFANS trademark” in this decision.

Prior decisions under the Policy have recognized the Complainant’s common law trademark rights in the ONLYFANS mark since 2017 and its first use in commerce since 2016, as well as the global fame and success of the Complainant’s social media platform and the consequent well -known character of the ONLYFANS mark. In light of the Panel’s reasoning below the Panel does not find it necessary to consider the question of unregistered rights further.

The Complainant owns the domain name <onlyfans.com>, which was registered on January 29, 2013 and it is linked to its main website.

The Disputed Domain Name was registered on October 4, 2020. It resolves to a website (the Respondent’s Website”) which contains numerous references to the Complainant’s ONLYFANS trademark and which offers for streaming or download content which has been pirated from or is at least similar to the Complainant’s own service.

The Complainant sent a cease-and-desist letter to Respondent on August 12, 2021, demanding the Respondent stop using and cancel the Disputed Domain Name. The Respondent did not respond.

5. Parties’ Contentions

A. Complainant

Key contentions of the Complaint may be summarized as follows:

The Disputed Domain Name incorporates part of the ONLYFANS mark namely the word ONLY then adds the term “mega packs”. The Disputed Domain Name recognizably refers to the Complainant’s ONLYFANS trademark is confusingly similar to that trademark.

The Respondent has no rights or legitimate interests in the Disputed Domain Name. No evidence indicates that the Respondent is known by the terms included in the Disputed Domain Name, and the Respondent has no authorization to use the ONLYFANS mark. The Respondent is pirating material from the Complainant’s website which is clearly not legitimate.

The Disputed Domain Name was registered and is being used in bad faith. The Respondent was undoubtedly aware of the ONLYFANS trademark when he registered the Disputed Domain Name. The content of the Respondent’s website corroborates the bad faith registration and use of the Disputed Domain Name. The terms “mega packs” refers to large collections or “mega packs” of content pirated from the Complainant’s services and available to the Respondent’s users.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Preliminary Matters

The Panel notes that no communication has been received from the Respondent. However, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar, then the Panel considers that this satisfies the requirement in paragraph 2(a) of the Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).

The Panel also notes this is a case where one Respondent (Withheld for Privacy ehf) appears to be privacy or proxy service.

The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows:

“Panel discretion

In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.

Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.”

In the present case the Panel considers the substantive Respondent to be Pablo Espinoza and references to the Respondent are to that person.

Substantive Matters

Paragraph 4(a) of the Policy states that the Complainant must prove each of the three following elements in respect of the Disputed Domain Name:

(i) the Disputed Domain Name is identical to or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in the Disputed Domain Name;

(iii) 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 rights in the ONLYFANS trademark.

The Panel finds the Disputed Domain Name is confusingly similar to the ONLYFANS trademark. It seems to the Panel that this trademark conflates two ordinary English words – “only” and “fans” which each are of approximately equal weight in the resulting singular trademark. The Disputed Domain Name removes one of those words and adds generic terminology. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000‑0662). It is established that, where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694). The question therefore is whether “only” is a sufficient approximation to “onlyfans” in the context of the case analysis at hand. The Panel accepts this may be a case-specific issue but has formed the view that this is the type of case referred to at WIPO Overview 3.0 section 1.7: “In specific limited instances, while not a replacement as such for the typical side-by-side comparison, where a panel would benefit from affirmation as to confusing similarity with the complainant’s mark, the broader case context such as website content trading off the complainant’s reputation, or a pattern of multiple respondent domain names targeting the complainant’s mark within the same proceeding, may support a finding of confusing similarity.”

The content of the Respondent’s website is undoubtedly directed at trading off the Complainant’s reputation and this supports the conclusion that the Disputed Domain Name is confusingly similar to the Complainant’s trademark. The Panel moreover notes that the term “mega packs” appearing after the invoked portion of the mark clearly signals an intent to conjure up (in a clearly infringing manner) the Complainant’s mark. The Panel also notes that at least one past WIPO decision found confusing similarity where the disputed domain name consisted of only a portion of the Complainant’s ONLYFANS mark See Fenix International Limited v. Host Master, 1337 Services LLC, WIPO Case No. D2021-0582 (<ofans.party>).

It is also well established that the generic Top-Level Domain (“gTLD”) (in this case “.com”) does not generally affect the domain name for the purpose of determining whether it is identical or confusingly similar (see for example Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429).

Accordingly, the Panel finds that the Disputed Domain Name is confusingly to the Complainant’s ONLYFANS trademark, and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy non-exhaustively lists three circumstances that demonstrate a right or legitimate interest in a domain name:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

None of these apply in the present circumstances. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the ONLYFANS trademark. The Complainant has prior rights in the ONLYFANS trademark which precede the Respondent’s registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce relevant evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

The Panel finds that the Respondent has failed to produce any evidence to establish any rights or legitimate interests in the Disputed Domain Name. The Panel moreover incorporates its findings under the third element here; in such a case of clear bad faith, there can be no rights or legitimate interests. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.

C. Registered and Used in Bad Faith

In the present circumstances the Panel concludes that the Respondent chose to register a name confusingly similar to the Complainant’s trademark in order to facilitate a business where the Respondent’s Website could offer for financial reward material that had been pirated from or is at minimum similar to the Complainant’s own website. Manifestly the choice of name was not coincidental.

Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”

In the present circumstances the Panel agrees with the Complainant that factor (iv) applies as the Respondent was seeking to attract customers by creating a likelihood of confusion with the Complainant's ONLYFANS trademark. The Panel also notes that the Respondent has not filed a Response and hence has not availed himself of the opportunity to present any case of good faith that he might have. The Panel infers that none exists.

Accordingly, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith and the third condition of paragraph 4(a) of the Policy has been fulfilled.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4 of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name, <only-mega-packs.com> be cancelled.

Nick J. Gardner
Sole Panelist
Date: November 18, 2021