WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Fenix International Limited v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico
Case No. D2020-3048
1. The Parties
The Complainant is Fenix International Limited, United States of America (“United States”), represented by Walters Law Group, United States.
The Respondent is Domains By Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.
2. The Domain Name and Registrar
The disputed domain name <0nlyfans.com> 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 November 16, 2020. On November 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 18, 2020, 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 November 23, 2020 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 amended Complaint on November 23, 2020.
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 December 1, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 21, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 22, 2020.
The Center appointed Assen Alexiev as the sole panelist in this matter on January 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 owns and operates a social media platform that allows users to post and subscribe to audiovisual content. This platform is located at the domain name <onlyfans.com>. In 2020, it was the 466th most popular website in the world and the 216th most popular website in the United States, according to Alexa Internet.
The Complainant is the owner of the following registrations of the sign “ONLYFANS” (the “ONLYFANS trademark“):
− the United States word trademark ONLYFANS with registration No. 5769267, registered on June 4, 2019 for goods in International Class 35;
− the United States word trademark ONLYFANS.COM with registration No. 5769268, registered on June 4, 2019 for goods in International Class 35;
− the European Union word trademark ONLYFANS with registration No. 017912377, registered on January 9, 2019 for goods and services in International Classes 9, 35, 38, 41, and 42; and,
− the European Union combined trademark ONLYFANS with registration No. 017946559, registered on January 9, 2019 for goods and services in International Classes 9, 35, 38, 41, and 42.
The Complainant is also the owner of the domain name <onlyfans.com> registered on January 29, 2013.
The disputed domain name was registered on March 26, 2018. It resolves to a parking webpage containing pay-per-click links.
5. Parties’ Contentions
A. Complainant
The Complainant submits that it has common law rights in the ONLYFANS trademark, which has acquired distinctiveness by May 30, 2017. The Complainant registered the <onlyfans.com> domain name on January 29, 2013 and started using the ONLYFANS mark on July 4, 2016, well before the Respondent registered the disputed domain name on March 26, 2018. According to the Complainant, its ONLYFANS trademark is known across the world for being a fast-growing social media website and has received unsolicited press coverage in multiple languages across the world. As a result of this advertising and press coverage, the Complainant’s <onlyfans.com> domain name had nearly 3.3 million registered accounts on March 26, 2018, with thousands more users joining every day, and at the time when the Respondent registered the disputed domain name, the <onlyfans.com> domain name received millions of hits per month.
The Complainant states that the disputed domain name is identical or confusingly similar to the Complainant’s ONLYFANS mark, because the number “0” in the disputed domain name may be visually perceived as the letter “o” in the Complainant’s ONLYFANS trademark. According to the Complainant, the Respondent has engaged in typosquatting, and has intentionally chosen the confusingly similar number “0” to deceive Internet users.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name, because the disputed domain name directs to a webpage containing pay-per-click links to the Complainant’s competitors; which links falsely suggest an affiliation with the Complainant by using the Complainant’s exact trademark or other descriptions of overlapping services. According to the Complainant, the Respondent registered and used the disputed domain name not because it refers to or is associated with itself, but because it is confusingly similar to the <onlyfans.com> domain name and the ONLYFANS trademark, used by the Complainant in association with its services. The Complainant adds that the Respondent is hiding its identity behind a privacy service, and has been the respondent in more than 140 decided cases before the Center.
The Complainant contends that the disputed domain name was registered and is being used in bad faith. According to it, by the time the disputed domain name was registered, the Complainant had been using its trademark for about four years and had acquired common law rights in it. The Complainant notes that the Respondent has hidden its identity behind a privacy service, and is a known serial cybersquatter.
The Complainant points out that the disputed domain name resolves to a website with pay-per-click links that contain the Complainant’s ONLYFANS trademark or a slight spelling variation of it, and direct to websites of the Complainant’s direct competitors. According to the Complainant, the use of the disputed domain name in such a way disrupts its business and causes harm to the Complainant’s brand image.
The Complainant states that it sent a cease-and-desist letter to the Respondent on October 27, 2020, to which the Respondent did not respond.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(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 Respondent has registered and is using the disputed domain name in bad faith.
By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name […].”
The Respondent has however not submitted a Response and has not disputed the Complainant’s contentions and evidence in this proceeding.
A. Identical or Confusingly Similar
The Complainant has provided evidence for the registration of the ONLYFANS trademark, which satisfies the Panel that the Complainant has established its trademark rights for the purposes of the present proceeding.
The Complainant also submits that it has unregistered trademark rights in the ONLYFANS trademark, arising as a result of its use in the period starting from 2016. As summarized in section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), to establish unregistered trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services. Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes the duration and nature of use of the mark, the amount of sales under the mark, the nature and extent of advertising using the mark, the degree of actual public recognition, and consumer surveys. Particularly with regard to brands acquiring relatively rapid recognition due to a significant Internet presence, panels have also been considering factors such as the type and scope of market activities and the nature of the complainant’s goods and/or services. The fact that a respondent is shown to have been targeting the complainant’s mark (e.g., based on the manner in which the related website is used) may support the complainant’s assertion that its mark has achieved significance as a source identifier.
The Complainant submits that its website at the domain name <onlyfans.com> had nearly 3.3 million registered accounts as of the date of registration of the disputed domain name in 2018, and received millions of hits per month. As discussed below, the disputed domain name represents a typosquatted version of the ONLYFANS trademark, which supports a finding that the Respondent has targeted the Complainant with its registration, and respectively the Complainant’s assertion that its trademark has achieved significance as a source identifier. This is sufficient to satisfy the Panel that the ONLYFANS trademark has become a distinctive identifier that Internet users associate with the Complainant’s services, including prior to the registration of the disputed domain name. Therefore, the Panel finds that the Complainant has established that it has unregistered trademark rights in the ONLYFANS trademark for the purposes of the Policy.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) and country code Top-Level Domain (“ccTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview 3.0. The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD of the disputed domain name.
The disputed domain name incorporates a typosquatted variation of the ONLYFANS trademark where the letter “o” is substituted by the number “0”. Many users of the Internet may not notice this variation and instead mistakenly regard the disputed domain name as representing the ONLYFANS trademark or as being the Complainant’s domain name <onlyfans.com>.
In view of the above, the Panel finds that the disputed domain name is confusingly similar to the ONLYFANS trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP 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. See section 2.1 of the WIPO Overview 3.0.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent is using the disputed domain name to direct visitors to a pay-per-click website containing links to competitors of the Complainant, and adds that the Respondent is hiding its identity behind a privacy service and has not responded to the Complainant’s cease-and-desist letter. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent had a fair opportunity to present its case and to address the arguments and evidence of the Complainant and explain why it has chosen and registered the disputed domain name, but refrained from doing so. The Respondent has not denied that it has not responded to the Complainant’s cease-and-desist letter.
The disputed domain name is a confusingly similar version of the ONLYFANS trademark and of the Complainant’s domain name <onlyfans.com>, and in the absence of any allegation or evidence to the contrary, the Panel regards it as an example of typosquatting. The evidence shows that it resolves to a website featuring pay-per-click links to what the Complainant describes as its competitors. The case file also shows that the contact details of the Respondent provided to the Registrar are false.
In view of the above, it appears to the Panel that it is more likely than not that the Respondent, being aware of the goodwill of the Complainant and of its ONLYFANS trademark, has registered and used the disputed domain name in an attempt to confuse and attract Internet users to the website at the disputed domain name and to redirect them to competitors of the Complainant for financial gain. To the Panel, such conduct does not appear to be fair or giving rise to rights or legitimate interests of the Respondent in the disputed domain name.
Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(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 Respondent has incorporated a typosquatted version of the Complainant’s ONLYFANS trademark in the disputed domain name and has associated it with a website displaying pay-per-click links to competitors of the Complainant. This was done after the Complainant started operating its website at the domain name <onlyfans.com> and it became very popular which gave rise to common law trademark rights of the Complainant in the ONLYFANS trademark. This is sufficient to satisfy the Panel that the Respondent must have been well aware of the Complainant and of the ONLYFANS trademark when it registered the disputed domain name and that it has targeted this trademark with the registration and use of the disputed domain name, likely in an attempt to confuse and attract Internet users for financial gain through the generation of revenue from pay-per-click links.
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 <0nlyfans.com> be transferred to the Complainant.
Assen Alexiev
Sole Panelist
Date: January 26, 2021
