WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fenix International Limited v. Registration Private/ Ashwani Verma

Case No. D2021-2705

1. The Parties

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

Respondent is Registration Private/Ashwani Verma, India.

2. The Domain Name and Registrar

The disputed domain name <onlyfansnudes.info> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2021. On August 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 19, 2021, 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 Complainant on August 23, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on September 6, 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 Respondent of the Complaint, and the proceedings commenced on September 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 28, 2021. Respondent sent an informal email to the Center on September 8, 2021.

The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on October 5, 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

Complainant is Fenix International Limited, a company which operates a social media network named ONLYFANS, through which users can interact with each other as they share and subscribe to audiovisual content for adults. Complainant’s services can be accessed worldwide through the Internet, specifically through Complainant’s official website “www.onlyfans.com” which achieved the title of 379th most popular website on the World Wide Web, according to Alexa Internet, and 213th most accessed website in the United States of America.

Aiming to protect its trademark rights over the world, Complainant owns a wide international portfolio of registered trademarks containing the sign ONLYFANS in a variety of jurisdictions, including the European Union, the United Kingdom and the United States of America.

Below are some examples of Complainant’s trademark registrations:

Moreover, it is important to highlight that Complainant’s official domain name <onlyfans.com> was registered on January 29, 2013 and is responsible for most of the company’s success and good reputation. Meanwhile, the disputed domain name <onlyfansnudes.info> was registered only on March 30, 2021 – that is, after the registration of Complainant’s domain name <onlyfans.com> and cited trademarks.

At last, it is important to note that the disputed domain name resolves to a website which imitates the content of Complainant’s website, providing several pieces of audiovisual content for mature audience.

5. Parties’ Contentions

A. Complainant

Complainant submits that the disputed domain name <onlyfansnudes.info> is confusingly similar to its registered trademarks and domain name <onlyfans.com>, since it is composed by the exact sign ONLYFANS, with the difference that in the disputed domain name such sign is followed by the descriptive term “nudes”. According to Complainant, the addition of the term “nudes” and the Top-Level Domain (“TLD”) “.info” would not be sufficient to avoid a finding of confusing similarity under this element.

Therefore, the disputed domain name would be clearly intended to imitate Complainant’s business and take advantage of its well-known reputation, fulfilling paragraph 4(a)(i) of the Policy and paragraph 3(b)(viii), (b)(ix)(1) of the Rules.

Furthermore, Complainant affirms that Respondent does not have any rights or legitimate interests in respect of the trademark ONLYFANS, nor is it widely known by the disputed domain name, authorised or licensed to use such trademark as a domain name.

Complainant notes that its global fame and success makes it clear that Respondent was well aware of the existence of Complainant’s rights to the trademark ONLYFANS and, in consequence, Respondent knew that it had no rights or legitimate interests in the disputed domain name. Thus, according to Complainant, Respondent’s interest on the use of the trademark ONLYFANS would not be legitimate.

In addition, Complainant alleges that it has submitted a prima facie case to prove that Respondent does not have any rights or legitimate interest over the disputed domain name, so that burden of proof shifts to Respondent, who must rebut Complainant’s prima facie showing. In case Respondent fails in submitting a due response, Complainant believes that it must lead to a presumption that Respondent is unable to prove the existence of such right or interest.

Therefore, in this case, paragraph 4(a)(ii) of the Policy and paragraph 3(b)(ix)(2) of the Rules would be fulfilled.

At last, Complainant states that the disputed domain name <onlyfansnudes.info> was registered and is being used in bad faith.

Complainant affirms that it is very likely that Respondent was well aware of its rights over the trademark ONLYFANS when registering the disputed domain name, given that (i) just like Complainant’s official website, the website hosted by the disputed domain name purports to offer adult entertainment content, including contents copied from Complainant’s platform; and that (ii) the disputed domain name was registered on March 30, 2021, long after Complainant had duly registered the sign ONLYFANS and had acquired clear distinctiveness for its trademark over the world.

Furthermore, Complainant alleges that it has sent a cease-and-desist letter to Respondent on June 24, 2021, requesting Respondent to stop using and transfer the disputed domain name to Complainant. However, Respondent has never submitted a reply to such letter, which would be a further evidence of bad faith.

Therefore, according to Complainant, the fact that Respondent registered the disputed domain name fully incorporating Complainant’s well-know trademark ONLYFANS, when already aware of Complainant's rights to such sign, to offer services that directly compete with those offered by Complainant, demonstrates that Respondent registered the disputed domain name in bad faith, so that paragraph 4(a)(iii) and 4(b) of the Policy and paragraph (b)(ix)(3) of the Rules would also be fulfilled.

B. Respondent

On September 16, 2021, Respondent submitted an informal e-mail to the Center with the following content: “Hello. I am willing to transfer the domain to complainant. Please let me know how to proceed.”

However, as Complainant did not submit a request for suspension of the proceeding in order to explore settlement options together with Respondent, the Center proceeded and appointed this Panel to hand a decision on the case.

6. Discussion and Findings

To succeed in a UDRP complaint, Complainant must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied, as following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) 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.

The burden of proving these elements is upon Complainant.

Respondent had 20 days to submit a formal response in accordance with paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules establishes that if a respondent does not duly respond to the Complaint, the Panel’s decision shall be based upon Complaint’s allegations.

A. Identical or Confusingly Similar

Complainant has duly proven that it owns prior trademark and common law rights over the sign ONLYFANS, which is registered in many jurisdictions, and that the disputed domain name <onlyfansnudes.info> incorporates such trademark in its entirety, with the addition of the descriptive term “nudes” and a different TLD “.info”.

The Panel finds that “www.onlyfans.com” is a widely known platform and believes the disputed domain name <onlyfansnudes.info> may cause consumers’ confusion, since it incorporates Complainant’s trademark in its entirety. The addition of the word “nudes” and the TLD “.info” instead of “.com” - which composes Complainant’s official domain name - are trivial variations that do not avoid a finding of confusing similarity with the trademark ONLYFANS, specially because the TLD is a necessary component for the registration and use of a domain name.

Accordingly, section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states that “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. The nature of such additional term(s) may however bear on assessment of the second and third elements”.

Furthermore, Panel also refers to section 1.11 of the WIPO Overview 3.0., which stablishes that “the applicable Top Level Domain (‘TLD’) 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 finds that the disputed domain name <onlyfansnudes.info> is confusingly similar to Complainant’s signs and so the requirement of the first element of paragraph 4(a) of the Policy is satisfied.

B. Rights or Legitimate Interests

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0 as follows: “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

In this case, noting the facts and contentions listed above, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests, so the burden of production shifts to Respondent. As Respondent has not duly replied to Complainant’s contentions, the Panel has considered Complainant’s unrebutted prima facie case to be sufficient to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name <onlyfansnudes.info>.

Therefore, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists a number of circumstances that, without limitation, are deemed evidence of the registration and use of a domain name in bad faith.

Firstly, the Panel finds that Complainant succeed in demonstrating that Respondent was aware of Complainant’s rights to the trademark ONLYFANS at the time of registration of the disputed domain name <onlyfansnudes.info>, especially when considering that (i) ONLYFANS is a famous brand worldwide, as recognized by previous UDPR Panels; and that (ii) the disputed domain name was registered by Respondent on March 30, 2021, after the registration of Complainant’s official domain name <onlyfans.com> and trademarks listed in section 4 of this decision.

Furthermore, the Panel notes that the disputed domain name is being used by Respondent as a fraudulent mean to divert Complainant’s audience in its favor, given that it offers the same content as Complainant, namely, adult entertainment content, including pirated content posted by Complainant’s users in Complainant’s official website. Therefore, the Panel believes that Respondent intends to take advantage of Complainant’s commercial value and goodwill identified by its famous trademark ONLYFANS to deceive online users for its own gain, what represents a finding of bad faith.

At last, the Panel notes that Respondent’s lack of response to the cease-and-desist letter sent by Complainant on June 24, 2021, as well as the content of its response to the Complaint - by which Respondent affirmed its intention to transfer the domain name to Complainant - is further indication of registration and use of the disputed domain name in bad faith.

Given all the above-mentioned, the Panel concludes that the disputed domain name was registered and is being used in bad faith under the Policy. As such, the Panel finds that Complainant has satisfied 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 name <onlyfansnudes.info> be transferred to Complainant.

Gabriel F. Leonardos
Sole Panelist
Date: October 19, 2021