WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fenix International Limited v. Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf / Eduardo Guerrero Romero

Case No. D2021-3180

1. The Parties

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

The Respondent is Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf, Iceland / Eduardo Guerrero Romero, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <onlypacks.net> 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 27, 2021. On September 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 27, 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 the Complainant on September 28, 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 on September 28, 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 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 26, 2021. An informal communication from the Respondent was received by the Center on September 28, 2021. The Commencement of Panel Appointment Process was sent to the Parties on October 27, 2021 by the Center.

The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on November 11, 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 is the owner and operator of the website located at the domain name <onlyfans.com>, registered on January 29, 2013, which is used as a social media platform under the ONLYFANS trademark. Said platform allows users to post and subscribe to audiovisual content. According to Alexa Internet rankings, the site is one of the most visited in the world and (as of May 20, 2021) ranks as No. 379 in global Internet engagement and at No. 213 in terms of most popular sites in the United States.

The Complainant owns several registered trademarks for its ONLYFANS mark including United Kingdom Registered Trademark No. UK00917912377 for the word mark ONLYFANS, with registration date of January 9, 2019, in classes 9, 35, 38, 41, and 42. Said mark is a national trademark automatically generated from the Complainant’s corresponding European Union trademark No. EU017912377, as a result of the United Kingdom exiting the European Union at the end of December 2020, and is treated as having been registered on the same date as the latter mark. The Complainant also claims unregistered trademark rights based on usage of the ONLYFANS mark commencing at the latest by July 4, 2016, and notes that the same has been recognized in previous decisions under the Policy.

The disputed domain name was registered on December 25, 2020. The website associated with the disputed domain name is entitled “ONLYPACKS” where the letter “o” surrounds a padlock device. This letter “o” with padlock matches that represented in the Complainant’s United Kingdom device mark for a stylized representation of the word ONLYFANS, registered under No. UK00917946559 on January 9, 2019. In a centered sub-heading, said website contains the statement “Would you like to get access to all the OnlyFans content for free?”, and beneath said heading are a series of rectangles, apparently representing accessible content in the form of “packs”. The padlock device is reproduced in the center of each rectangle.

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:

(i) Identical or confusingly similar:

The disputed domain name is confusingly similar to the Complainant’s mark and prior UDRP panels have found confusing similarity where a dominant portion of a mark is contained in the domain name concerned. A previous case under the Policy found the domain name <ofans.party> to be confusingly similar to the Complainant’s mark. The use of “only” rather than the Complainant’s full mark does not prevent a finding of confusing similarity.

Website content can be relevant to the assessment of confusing similarity if “a website is trading off the complainant’s reputation”. The disputed domain name here contains numerous references to the Complainant’s mark and contains a lock logo which mimics the Complainant’s registered device mark. The content makes reference to users obtaining “the OnlyFans content for free”. The Respondent is not only trading off the Complainant’s reputation but is actually trading in content pirated from the Complainant’s users.

The disputed domain name consists of the addition of the descriptive term “packs” after a dominant portion of the Complainant’s mark which does nothing to avoid confusing similarity. The use of the generic Top-Level domain (“gTLD”) does not change the result, and this should be disregarded.

(ii) Rights and legitimate interests:

The Respondent has no connection or affiliation with the Complainant and has received no authorization, license, or consent to use the Complainant’s mark in the disputed domain name. The Respondent is not commonly known by the mark and holds no trademarks for the disputed domain name. The Complainant has achieved global fame and success in a short time which demonstrates that the Respondent knew of the Complainant’s marks and that the Respondent had no rights or legitimate interests in the disputed domain name. The Panel should presume that the Respondent is not known by the text of the disputed domain name. The Respondent will be unable to provide credible evidence that it has rights or legitimate interests in the disputed domain name. The disputed domain name cannot constitute fair use as it effectively impersonates, or suggests sponsorship, or endorsement by the Complainant.

The additional term “packs” in the disputed domain name creates a risk of implied affiliation because the term is commonly understood to refer to downloadable folders of leaked content. The website at the disputed domain name contains a lock logo similar to the Complainant’s registered device mark. It is questionable whether the Respondent has rights or legitimate interests in the disputed domain name where its website is passed off as a website of the Complainant by featuring a similar logo. Said website offers adult entertainment services including content pirated from the Complainant’s users (this being additional evidence that the Respondent was aware of the Complainant) in direct competition with the Complainant’s services. This cannot give rise to rights and legitimate interests. Providing the Complainant’s users’ content free of charge does not amount to a legitimate noncommercial or fair use of the disputed domain name.

(iii) Registered and used in bad faith:

Bad faith registration may be found from the fact that the disputed domain name was registered long after the Complainant attained rights in its ONLYFANS mark, both registered and unregistered. The mark’s acquired distinctiveness is so strong that the Complainant’s website is among the top 500 most popular sites worldwide. Previous UDRP panels have consistently found that registration of a domain name that is confusingly similar to a widely-known trademark, as here, creates a presumption of bad faith. The Complainant has been recognized in previous cases under the Policy as internationally well-known among the relevant public, such that the Respondent either knew or ought to have known of the Complainant’s mark and likely registered the disputed domain name to target said mark. There is no benign reason for the Respondent’s registration of the disputed domain name.

The similarity of the lock logo on the Respondent’s website renders it more probable than not that the Respondent was fully aware of the Complainant and its mark at the time of registration of the disputed domain name. Bad faith registration should be found since the Respondent’s use of a dominant portion of the Complainant’s mark with the term “packs” enhances the likelihood of confusion because it refers to downloadable collections of content pirated from the Complainant’s services. The use of the disputed domain name for such pirated services constitutes evidence of bad faith use and registration.

The Complainant sent a cease-and-desist letter to the Respondent on August 13, 2021. The Respondent did not respond thereto. The Respondent hid behind a WhoIs privacy wall. Such use of a privacy service combined with a failure to respond is further evidence of bad faith.

Bad faith use should be found because the disputed domain name was registered after the Complainant had well-recognized rights, because the disputed domain name directs users to a commercial website in direct competition with the trademark owner, and because the Respondent is diverting Internet traffic destined for the Complainant by misappropriating the Complainant’s copyright-protected content. There is no plausible circumstance under which the Respondent could legitimately register or use the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions, and its informal email to the Center dated September 28, 2021, did not contain any rebuttal relating to the terms of the Complaint.

6. Discussion and Findings

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

(i) the disputed domain name is identical 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 respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The first element inquiry proceeds in two parts. First, the Complainant must demonstrate UDRP-relevant rights in a trademark. Secondly, the trademark is compared with the disputed domain name on a straightforward side-by-side basis to assess identity or confusing similarity. In such comparison, the gTLD, in this case, “.net”, is typically disregarded on the basis that this is required in a domain name for technical reasons.

The Panel is satisfied that the Complainant has rights in its ONLYFANS trademark with reference to the registered trademarks noted in the factual background section above. Comparing such mark to the disputed domain name, it may be seen that the mark is not identical thereto. However, the majority of the Complainant’s mark is present, including the first term “only” and the final letter “s”. The “fan” portion of the mark has been replaced in the disputed domain name with “pack” but this does not prevent a finding of confusing similarity between the Complainant’s trademark and the disputed domain name. Moreover, the Complainant’s mark and the disputed domain name are syntactically and conceptually similar. Each contains two terms, both of one syllable each, with the second term being in plural form, such second term being recognizably qualified by the first term “only” in both cases.

While the content of the website associated with the domain name undergoing the comparison exercise is typically disregarded in the assessment of identity or confusing similarity, it can be relevant in some instances where such content affirms the fact that the respondent prima facie seeks to target the complainant’s mark. That is the situation in the present case. The Complainant’s ONLYFANS mark is directly and specifically referenced in the heading to the Respondent’s website. Furthermore, the Complainant’s padlock device is reproduced throughout (see section 1.15 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) on the relevance of website content to the question of identity or confusing similarity). In all of these circumstances, there appears to the Panel to be no doubt that the Respondent specifically selected the disputed domain name as a play on the Complainant’s mark, and on the basis that it would be confusingly similar thereto.

Based upon the above analysis, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has carried its burden with regard to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in the disputed domain name:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(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 organization) 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.”

The consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in a domain name. In the present case, the Panel finds that the Complainant has established the requisite prima facie case based on its submissions that the Respondent has no connection with the Complainant, that the Respondent is not commonly known by the disputed domain name, and that the Respondent holds no corresponding trademark. Furthermore, the Complainant produces uncontested evidence showing that the disputed domain name is being used with specific reference to the Complainant’s ONLYFANS mark and with repeated use of a portion of the Complainant’s padlock device mark to offer content apparently pirated from the Complainant’s users. Such use could not confer rights and legitimate interests upon the Respondent.

The Complainant having made out the requisite prima facie case, the burden of production shifts to the Respondent to bring forth evidence of any rights or legitimate interests which it might have in the disputed domain name. The Respondent however has chosen not to respond formally to the Complaint, and there is nothing in its informal email to the Center which puts forward any submissions or evidence suggesting that it might have any such rights or legitimate interests. In the absence of any such contribution from the Respondent, the use to which the disputed domain name is currently being put must speak for itself. Such use is the offering of content asserted to be pirated from the Complainant’s users, in connection with which several prominent references to the Complainant, its ONLYFANS mark and a recognizable portion of its device mark are made. This could not be regarded on any view as a bona fide offering of goods or services.

In all of these circumstances, the Panel finds that the Respondent has failed to rebut the Complainant’s prima facie case that the Respondent has no rights and legitimate interests in the disputed domain name, and accordingly that the Complainant has carried its burden in terms of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

“(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 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.”

The Complainant’s ONLYFANS mark has in the Panel’s view become well-known in a relatively short space of time, due to the rapid rise in popularity of the Complainant’s eponymous website. The registration of the disputed domain name post-dates such popularity and contains a play on the Complainant’s trademark, partially integrating this with the term “packs”, which the Complainant asserts (and the Respondent does not deny) is commonly used in association with folders of downloaded content. The reference to the Complainant is reinforced by the use to which the disputed domain name has been put in that the associated website makes several prominent references to the Complainant’s ONLYFANS mark, while reproducing the padlock within a letter “o” component of the Complainant’s device mark. The Complainant also makes the uncontested allegation that the Respondent’s website contains content pirated from the Complainant’s users, thus reinforcing the Respondent’s likely reason for integrating the term “packs” into the disputed domain name. In all of these circumstances, the Panel finds it more probable than not that the Respondent registered the disputed domain name with the Complainant and its rights in mind, and with intent to target these. Indeed, due to the nature of the website associated with the disputed domain name, the Respondent could not credibly have denied prior knowledge of the Complainant.

The Panel has no doubt that the Respondent’s website is ultimately intended for the purposes of commercial gain and, in offering video content while referencing the Complainant’s mark, is providing services in direct competition to (and in an apparent impersonation of) the Complainant. In the circumstances of the present case, this is an indicator of registration and use in bad faith. Likewise, the Complainant’s uncontested allegation that the Respondent has pirated its website content from the Complainant’s users is itself an indicator of the Respondent’s bad faith intentions.

The Respondent has not filed any formal Response and has failed to tender any reasonable explanation, whether in its informal email to the Center or otherwise, for its registration and use of the disputed domain name. In the circumstances of the present case, the Panel cannot conceive of any possible good faith motivation which the Respondent might have put forward.

The Panel concludes, based on all of the evidence on the present record, that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement consistent with the provisions of paragraph 4(b)(iv) of the Policy.

Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith and therefore that the Complainant has carried its burden in terms of 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 <onlypacks.net> be cancelled.

Andrew D. S. Lothian
Sole Panelist
Date: November 25, 2021