WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Fenix International Limited v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2020-3447

1. The Parties

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

The Respondent is Domains By Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Names and Registrar

The disputed domain names <aonlyfans.com> and <bonlyfans.com> (the “Disputed Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 17, 2020. On December 17, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On December 17, 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 December 22, 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 December 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 January 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 4, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 8, 2021.

The Center appointed John Swinson as the sole panelist in this matter on February 24, 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 Fenix International Limited, a company incorporated in the United Kingdom. According to the Complaint, the Complainant has owned and operated the website at <onlyfans.com> (the “Complainant’s Website”) for several years in connection with the provision of a social media platform that allows users to post and subscribe to audiovisual content.

According to the Complaint, the Complainant’s Website is one of the most popular websites in the world. According to Alexa Internet, it is the 466th most popular website in the world, and it is the 216th most popular website in the United States.

The Complainant owns a number of trade marks in the United Kingdom and the United States for ONLYFANS, including United Kingdom registered trade mark number UK00917946559, registered on January 9, 2019 (the “Trade Mark”).

The Respondent is Carolina Rodrigues, Fundacion Comercio Electronico, domiciled in Panama. No response was received from the Respondent and therefore little information is known about the Respondent.

The Disputed Domain Name <aonlyfans.com> was registered on August 26, 2019. The Disputed Domain Name <bonlyfans.com> was registered on February 21, 2020. According to the Complainant, both Disputed Domain Names previously directed desktop users to websites which instructed them to download a browser extension for phishing purposes. The Disputed Domain Name <aonlyfans.com> now directs desktop users to a website featuring pay-per-click links to websites that directly compete with the Complainant’s services. According to the Complainant, the Disputed Domain Names directed mobile users to websites instructing them to download a malicious application.

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The Complainant owns the registered Trade Mark and has extensive common law rights in the Trade Mark that commenced at the latest by July 4, 2016. The Complainant’s unregistered common law rights in the Trade Mark have been recognized by a previous panel as having accrued and acquired distinctiveness by no later than May 30, 2017.

Domain names consisting of a common, obvious, or intentional misspelling of a trade mark are normally considered to be confusingly similar to the relevant mark. The Respondent here is engaged in such typosquatting.

The additional letters “a” and “b” in the Disputed Domain Names are barely perceptible and insufficient to distinguish the Disputed Domain Name from the Trade Mark. It appears the Respondent has intentionally chosen the additional letters “a” and “b” to deceive Internet users.

Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in the Disputed Domain Names.

Previous UDRP panels have held that use of a domain name for illegal activity, including distributing malware, can never confer rights or legitimate interests on a respondent. The Disputed Domain Names were originally used to direct desktop users to webpages that instructed users to download a malicious browser extension. The Disputed Domain Names were and continue to be used to direct mobile users to webpages that instruct users to download a malicious application. This is not a bona fide offering of goods or services.

The Complainant sent a cease and desist letter to the Respondent on November 20, 2020 requesting that the Respondent stop using and transfer the Disputed Domain Names to the Complainant. The Respondent did not respond, but shortly afterwards changed the websites at the Disputed Domain Names.

The Complainant submits that as of December 11, 2020, the Disputed Domain Name <bonlyfans.com> directed to a website that is nearly identical to the website which originally appeared at the Disputed Domain Name <aonlyfans.com>. The Disputed Domain Name <aonlyfans.com> now directs to a website with pay-per-click advertisements that direct users to websites that directly compete with the Complainant’s services, including influencer marketing platforms and dating sites. Using a disputed domain name to direct to a website with pay-per-click links that direct users to a complainant’s direct competitor does not qualify as a legitimate non-commercial use.

There is no evidence to indicate that the Respondent is commonly known by the Disputed Domain Names.

The Respondent has been the respondent in more than 140 cases decided by the Center and has a known record as a serial cybersquatter.

Registered and Used in Bad Faith

The Disputed Domain Names were registered on August 26, 2019 and February 21, 2020. By this time, the Complainant had been using the Trade Mark for at least three years and had both registered and common law rights in the Trade Mark. It is clear that the Respondent either knew or ought to have known of the Trade Mark at the time the Disputed Domain Names were registered.

The Respondent hid their identity behind a privacy shield. A respondent’s use of a privacy service combined with a failure to submit a response is additional evidence of bad faith registration, particularly in circumstances where the relevant domain name resolves to a website with pay-per-click links.

Given more than 140 cases before the Center have involved the Respondent, the Respondent is clearly a serial cybersquatter and has cybersquatted on the Trade Mark in the past with different domain names.

As outlined above, the Disputed Domain Names originally directed desktop users to websites that instructed them to download a fraudulent browser extension for phishing purposes. The Disputed Domain Names continue to direct mobile users to websites that instruct them to download a malicious application. Using a domain name to induce users to download malware is overt evidence of bad faith.

As outlined above, the Respondent did not respond to the Complainant’s cease and desist letter and the Respondent subsequently changed the websites to which the Disputed Domain Names resolve.

The Disputed Domain Name <aonlyfans.com> now directs to a website that includes pay-per-click links to websites that directly compete with the Complainant’s services. Such use of the Disputed Domain Name <aonlyfans.com> disrupts the Complainant’s business, causes harm to the Complainant’s brand image and exploits the Complainant’s reputation to attract users to the Disputed Domain Names.

B. Respondent

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

6. Discussion and Findings

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

(i) the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) the Disputed Domain Names have been registered and are being used in bad faith.

The Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s lack of a Response.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.

Where a domain name incorporates the entirety of a trade mark, or where at least a dominant feature of the relevant mark is recognisable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of the first element (section 1.7, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

The Disputed Domain Names incorporate the entirety of the Trade Mark, with the addition of the letters “a” and “b” in each case. The addition of these letters does not prevent confusing similarity between the Disputed Domain Names and the Trade Mark.

The Panel considers the Disputed Domain Names to be confusingly similar to the Trade Mark.

The Complainant succeeds on the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Complainant is required to make out a prima facie case showing that the Respondent lack rights or legitimate interests.

The Panel considers the Complainant has made out a prima facie case. This finding is based on the following Complainant’s contentions:

- The Complainant has not authorised the Respondent to use the Trade Mark in the Disputed Domain Names.
- There is no evidence that the Respondent has been commonly known by the Disputed Domain Names or has registered or common law trade mark rights in relation to these names.
- The Respondent is not using the Disputed Domain Names in connection with a bona fide offering of goods or services, or making a legitimate noncommercial or fair use of the Disputed Domain Names without intent for commercial gain. The Disputed Domain Names previously directed users to websites encouraging them to install malware and the Disputed Domain Name <bonlyfans.com> continues to do so. The Disputed Domain Name <aonlyfans.com> now directs to a website featuring pay-per-click links to influencer marketing platforms and dating websites which compete with the services offered by the Complainant. Such a use is not bona fide.

- The Respondent did not respond to a cease and desist letter sent by the Complainant.
- The Respondent has been the respondent in a large number of cases before the Center where the Respondent was held to be a cybersquatter.

The Respondent had the opportunity to demonstrate its rights or legitimate interests, but did not do so. As such, the prima facie case established by the Complainant has not been rebutted.

The Complainant succeeds on the second element of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Names in bad faith.

Registered in bad faith

The Disputed Domain Names were registered on August 26, 2019 and February 21, 2020. The Complainant registered the Trade Mark on January 9, 2019. Prior to and following this registration, the Complainant has used the Trade Mark in connection with the social media platform available at the Complainant’s Website, which allows users to post and subscribe to audiovisual content. The Complainant’s Website is very popular and well-known, particularly in certain population segments, and has been the subject of much media commentary. In the Panel’s view, the Respondent either knew or ought to have known of the Trade Mark at the time the Disputed Domain Names were registered and likely registered the Disputed Domain Names to target the Trade Mark.

In addition, the Respondent elected to shield its identity using a privacy service and has been the respondent in a large number of cases before the Center involving domain names which target other, existing trade marks.

Based on the factors outlined above, the Panel is satisfied that the Disputed Domain Names were registered in bad faith.

Used in bad faith

As outlined above, the Disputed Domain Names previously directed users to websites encouraging them to install malware. The Disputed Domain Name <bonlyfans.com> currently directs to an inactive website. The Disputed Domain Name <aonlyfans.com> currently directs users to a website featuring pay-per-click links to services which compete with those offered by the Complainant.

Use of a domain name to distribute malware constitutes use in bad faith (section 3.4, WIPO Overview 3.0).

By using the Disputed Domain Name <aonlyfans.com> to direct users to a website featuring pay-per-click links to services which compete with those offered by the Complainant, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website (see e.g., Abbott Laboratories v. Domain May Be For Sale, Check afternic.com Domain Admin, Whois protection, this company does not own this domain name s.r.o. / Hulmiho Ukolen, Poste restante, WIPO Case No. D2017-2124)

For these reasons, the Panel is satisfied that the Respondent has used both Disputed Domain Names in bad faith. This conclusion is further supported by the fact that the Respondent used a privacy service to conceal its identity, did not respond to the cease and desist letter sent by the Complainant and has been involved in a large number of cases before the Center involving domain names which target other trade marks.

In light of the above, the Panel finds that the Complainant has succeeded on the third element 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 Dames <aonlyfans.com> and <bonlyfans.com> be transferred to the Complainant.

John Swinson
Sole Panelist
Date: March 9, 2021