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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fenix International Limited v. WhoisGuard Protected, WhoisGuard, Inc. / Yazid Laiss / Stive Belb / Ahmed Bel Bouahli

Case No. D2021-0152

1. The Parties

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

The Respondents are WhoisGuard Protected, WhoisGuard, Inc., Panama / Yazid Laiss, United States / Stive Belb, Algeria / Ahmed Bel Bouahli, Marocco.

2. The Domain Names and Registrar

The disputed domain names <onlyfansaccount.xyz>, <onlyfansbypass.xyz>, <onlyfanshack.cc>, <onlyfanshack.com>, <onlyfans-plus.club>, <onlyfansplus.xyz> and <onlyfanz.xyz> are registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 20, 2021. On January 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 20, 2020, 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 January 22, 2021 providing the registrant and contact information disclosed by the Registrar, and requesting the Complainant to amend the Complaint adding the Registrar-disclosed registrants as formal Respondents and provide relevant arguments or evidence demonstrating that all named Respondents are, in fact, the same entity and/or that all domain names are under common control, and/or file a separate complaint for any domain name(s) for which it is not possible to demonstrate that all named Respondents are in fact the same entity and/or that all domain names are under common control and indicate (by short amendment or reply email) which domain name(s) will no longer be included in the current Complaint. The Complainant filed an amended Complaint on February 3, 2021.

On February 5, 2021, the Center noted that there appears to be at least prima facie grounds sufficient to warrant accepting the Complaint for the Panel’s final determination of the consolidation request on appointment.

The Center verified that the Complaint together with the amended 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 February 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 25, 2021. Between February 8, 2021 and February 17, 2021, the Respondent “Ahmed Bel Bouahli” sent informal emails to the Center claiming to have registered the disputed domain names for a client. On February 16, 2021, the Center informed the Parties that if the Parties wish to explore settlement options, the Complainant should submit a request for suspension. No such request was received. The Respondent did not submit any formal response. The Center informed the Parties that it would proceed to Panel appointment on February 26, 2021.

The Center appointed Steven A. Maier as the sole panelist in this matter on March 17, 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. Consolidation of Proceedings

A preliminary question arises in this case of whether the proceedings, against three different named underlying registrants as identified by the Registrar, may properly be consolidated into a single proceeding. The relevant considerations in this regard include whether the disputed domain names are under common control and whether consolidation would be fair and equitable to all parties (see paragraph 4.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

In this case, the Registrar (which is common to all seven of the disputed domain names) identifies that the disputed domain name <onlyfans-plus.club> is registered by the Respondent “Yazid Laiss”, that three of the disputed domain names, <onlyfansaccount.xyz>, <onlyfansplus.xyz> and <onlyfanz.xyz> are registered by the Respondent “Stive Belb” and that the remaining three disputed domain names, <onlyfansbypass.xyz>, <onlyfanshack.cc> and <onlyfanshack.com> are registered by the Respondent “Ahmed Bel Bouahli”.

The Panel notes, however, that the email from the Respondent “Ahmed Bel Bouahli” dated February 17, 2021 made reference to the possible transfer of the disputed domain names <onlyfansbypass.xyz> and <onlyfansplus.xyz>, although the latter of these disputed domain names is nominally registered by the Respondent “Stive Belb”.

The Complainant offers substantial circumstantial evidence to suggest that the ownership of all seven of the disputed domain names is linked, including the fact that they are all registered with the same registrar, utilize the same privacy service, were all registered or last updated within the period March to November 2020 and are all used for websites purporting offer unauthorized access to the Complainant’s services. The Complainant also provides evidence that the websites linked to the disputed domain names are extensively interlinked, such that clicking on a link in one of the websites will on nearly all occasions redirect to one of the other websites. Having reviewed these connections, the Panel is satisfied that the disputed domain names registered by each of the named Respondents are linked to those registered to the other two named Respondents and that all seven of the disputed domain names are therefore likely, on the balance of probabilities, to be under common control.

The Panel is unable to see any reason why consolidation of the proceedings would not be fair and equitable to all the parties and also notes that none of the named registrants has made any objection to such consolidation. The Panel therefore directs that the proceedings be consolidated and will refer in the remainder of this Decision to a single Respondent as encompassing the registrant of each of the disputed domain names.

5. Factual Background

The Complainant operates a social media platform at “www.onlyfans.com” which allows users to post and subscribe to audiovisual content on the Internet. It registered the domain name <onlyfans.com> in January 2013 and has operated the website referred to above since at least July 2016.

The Complainant is the owner of trademark registrations for the mark ONLYFANS including:

- United States trademark number 5769267 for the word mark ONLYFANS, registered on June 4, 2019 in International Class 35; and
- European Union Trade Mark number 017912377 for the word mark ONLYFANS, registered on January 9, 2019 in International Classes 9, 35, 38, 41and 42.

The disputed domain names were registered on the following dates:

<onlyfansaccount.xyz> on May 3, 2020;
<onlyfansbypass.xyz> on May 27, 2019;
<onlyfanshack.cc> on April 8, 2019;
<onlyfanshack.com> on November 10, 2018;
<onlyfansplus.xyz> on May 6, 2020;
<onlyfans-plus.club> on December 28, 2020; and
<onlyfanz.xyz> on May 12, 2020.

Each of the disputed domain names has resolved to a website which purports to offer access to an account or premium account for the Complainant’s website, free of charge, by way of a “bypass” or “hack”.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it has established common law rights in the mark ONLYFANS dating from well before the registration of any of the disputed domain names. It states that it has operated its social media platform at “onlyfans.com” since at least July 2016 and that the site is now the 428th most popular website on the World Wide Web according to Alexa rankings.

The Complainant submits that each of the disputed domain names is confusingly similar to its ONLYFANS trademark. It states that the first six of the disputed domain names all include the ONLYFANS trademark in full, together with the term “account”, “bypass”, “hack” or “plus”, none of which distinguish those disputed domain names from the Complainant’s trademark. The Complainant submits that the final disputed domain name, <onlyfanz.xyz>, represents an obvious misspelling of its trademark.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of any of the disputed domain names. It states that the use of a domain name for illegal activity can never confer rights or legitimate interests and that each of the disputed domain names is being used in such a manner. In particular, the Complainant submits evidence that each of the disputed domain names is linked to a website inviting uses to “bypass”, “hack” or “unlock” the Complainant’s services and that Internet users are asked to download a software application to enable them to do so. The Complainant contends that in all likelihood the software comprises malware or an illicit “phishing” attempt.

The Complainant submits that the disputed domain names were registered and have been used in bad faith. The Complainant states that it used the ONLYFANS marks for several years before any of the disputed domain names were registered and that the Respondent registered those names for the purpose of offering unauthorized access to the Complainant’s services. The Complainant contends that the Respondent has used the disputed domain names to confuse Internet users into downloading its potentially malicious software application. The Complainant adds that it sent the Respondent a “cease and desist” letter in December 2020 to which no reply was received and also that the Respondent has hidden its identity behind a privacy service.

The Complainant requests the transfer of each of the disputed domain names.

B. Respondent

The Respondent did not reply formally to the Complainant’s contentions. However, the email received from the Respondent “Ahmed Bel Bouahli” dated February 17, 2021 submitted that the client for whom he had registered the disputed domain names was not doing anything harmful and was simply obtaining referrals by “retargeting” Internet users wanting free content.

6. Discussion and Findings

In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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 Complainant has established that it is the owner of registered trademark rights in the name and mark ONLYFANS. Each of the first six of the disputed domain names incorporates the whole of that trademark, together with a dictionary term or terms in each case that do not prevent the trademark from being recognizable within the disputed domain name. The disputed domain name <onlyfanz.xyz> differs from the Complainant’s trademark only by the replacement of the letter “s” in the trademark with a “z”. The Top-Level Domain (“TLD”) applicable to each of the disputed domain names is in each case to be disregarded for the purpose of the present comparison. The Panel therefore finds that each of the disputed domain names is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

In the view of the Panel, the Complainant’s submissions set out above give rise to a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has not filed a formal Response in this proceeding and has not submitted any explanation for its registration and use of the disputed domain name, or evidence of rights or legitimate interests on its part in the disputed domain name, whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise. There being no other evidence before the Panel of any such rights or legitimate interests, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant has established that it operated a social media platform at “www.onlyfans.com” for some years before the registration of any of the disputed domain names and that its business in connection with that platform has received wide public recognition. Each of the disputed domain names contains the Complainant’s trademark ONLYFANS or a close approximation thereof and three of the seven disputed domain names contain an overt invitation to “bypass” or “hack” the Complainant’s protection. In the view of the Panel, the remaining four disputed domain names, <onlyfansaccount.xyz>, <onlyfansplus.xyz>, <onlyfans-plus.club> and <onlyfanz.xyz> are inherently misleading as clearly implying a legitimate association or connection with the Complainant. In view of the Respondent’s use of the disputed domain names to refer to the Complainant’s services, there can be no doubt that the Respondent registered the disputed domain names with the Complainant’s trademark in mind and with the intention of taking unfair advantage of the Complainant’s goodwill in that trademark. Furthermore, based on the evidence submitted by the Complainant, which the Respondent has not disputed, it is clear that the Respondent is using each of the disputed domain names to offer unauthorized access to the Complainant’s services by way of a “bypass” or “hack” and has used its relevant websites to provide a software product of unknown, but potentially malicious, consequences for download. In the circumstances, the Panel finds that each of the disputed domain names was both registered and is being used in bad faith.

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, <onlyfansaccount.xyz>, <onlyfansbypass.xyz>, <onlyfanshack.cc>, <onlyfanshack.com>, <onlyfans-plus.club>, <onlyfansplus.xyz> and <onlyfanz.xyz>, be transferred to the Complainant.

Steven A. Maier
Sole Panelist
Date: March 25, 2021

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