Fenix International Limited v Chad Profeta

WIPO Case No. D2024-0449

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Fenix International Limited v. Chad Profeta

Case No. D2024-0449

1. The Parties

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

States”).

Respondent is Chad Profeta, United States.

2. The Domain Names and Registrar

The disputed domain names <freeonlyfans.net> and <onlyleakz.fans> (the “Domain Names”) are registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2024. On January 31, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On January 31, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent (REDACTED FOR PRIVACY PrivacyGuardian.org llc) and contact information in the Complaint. The Center sent an email to Complainant on February 1, 2024, 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 February 1, 2024.

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 February 5, 2024. In accordance with the Rules, paragraph 5, the due date for Response was February 25, 2024. Respondent sent emails to the Center on February 1, 2024,

February 14, 2024, and February 21, 2024.

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The Center appointed Robert A. Badgley as the sole panelist in this matter on March 11, 2024. 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

Since 2016, Complainant has operated a website at “onlyfans.com” to host a platform for subscribers to view and post audiovisual content. The website states: “Sign up to support your favorite creators”.

According to Complainant, the “onlyfans.com” website is one of the most popular websites in the world, and Complainant has more than 180 million subscribers. By one Internet ranking service, the site is ranked 97th in the world in terms of traffic.

Complainant holds several registered trademarks for ONLYFANS or ONLYFANS.COM. For instance, ONLYFANS, registered on June 4, 2019 for “arranging subscriptions of the online publications of others,” with a July 4, 2016 date of first use in commerce. Complainant also holds USPTO Reg. No. 5,769,268 for ONLYFANS.COM, registered on June 4, 2019, also for “arranging subscriptions of the online publications of others,” with a July 4, 2016 date of first use in commerce. Complainant also holds European Union Reg. No. 017912377 for ONLYFANS, registered on January 9, 2019 in connection with, among other things, “online subscription services for the purpose of allowing individuals to subscribe and access content uploaded by members of the service for sporting, fitness and entertainment purposes”.

The Domain Name <onlyleakz.fans> was registered on September 23, 2022. The Domain Name <freeonlyfans.net> was registered on October 16, 2023. Both Domain Names resolve to a website identified as “Urban Croc Spot” which purports to offer “Only Fans Leaks”. According to Complainant, the website to which the Domain Names resolve contain content pirated from Complainant’s users.

On November 8, 2023, Complainant’s counsel sent a cease-and-desist email regarding both Domain Names to the Registrar (Respondent used a privacy service). Complainant received no response to this email.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied each of the elements required under the Policy for the transfer of each of the Domain Names.

B. Respondent

Respondent did not reply formally to Complainant’s contentions.

On February 1, 2024, Respondent wrote:

“Inform your client that I'd like $12,500 for the transfer of ownership for the domains freeonlyfans.net and entities outside of United States jurisdiction”.

OnlyLeakz.fans. I'd like $16,500 for the transfer of ownership for the domains freeonlyfans.net,

The entirety of Respondent’s response to the Complaint resides in two emails to the Center. On February
14, 2024, Respondent wrote:

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D2024-0449

“This email is pertaining to UDRP Case No. , regarding the two domains names to their ownership. I picked up the domain ‘FreeOnlyFans.net’ from ExpiredDomains.net, I really wasn't aware of UDRPs at the time nor that I'd have a copyright issue with Fenix/OF over the domain name itself. I understand Fenix/OF's potential claim to the portion of their copyright in the domain's name and I don't believe you guys should give my purchase up to them, but if that's the conclusion you come to for this single domain I understand. Regarding ‘OnlyLeakz.Fans’ I genuinely and wholeheartedly believe that ‘Fenix International Limited aka OnlyFans’ absolutely, unequivocally have ZERO legitimate claim to my domain, it is completely different from their copyright and they are exacerbating their claims. I request that you do not grant them ownership of my domain ‘OnlyLeakz.Fans’.”
[freeonlyfans.net and onlyleakz.fans]. Walters Law Group acting on behalf of ‘Fenix International Limited aka

On February 21, 2024, Respondent sent the Center an email confirming that his February 14, 2024 email constituted his entire Response to the Complaint.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each of the Domain Names:

(i)        the 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 Domain Name; and

(iii)      the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or
threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between
Complainant’s trademark and the Domain Names. WIPO Overview of WIPO Panel Views on Selected
UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Panel concludes that Complainant has rights in the trademark ONLYFANS through registration and use demonstrated in the record. The Panel also concludes that the Domain Names are confusingly similar to that mark. The Domain Name entirely incorporates the ONLYFANS mark and adds the words “leakz” (an apparent misspelling of “leaks”) or “free”. The Panel concludes that the mark remains clearly recognizable within the Domain Names despite these additional words. This is true even for the Domain Name <onlyleakz.fans>, where the additional word is positioned between the first word of the mark and the second word, and even though the word “fans” is the Top-Level Domain rather than the Second-Level Domain.

Complainant has established Policy paragraph 4(a)(i).

B. Rights or Legitimate Interests

For each of the Domain Names, pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i)        before any notice to you [Respondent] 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

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(ii)       you [Respondent] (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 [Respondent] 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.

Although 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 difficult task
of “proving a negative”, requiring information often primarily within the knowledge or control of the
respondent. Thus, where a complainant makes out a prima facie case that the respondent lacks rights or
legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence
demonstrating rights or legitimate interests in the domain name (although the burden of proof always
remains on the complainant). If the respondent fails to come forward with such relevant evidence, the
complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

The Panel concludes that Respondent lacks rights or legitimate interests in connection with the Domain Names. It is clear from this record that Respondent targeted Complainant’s mark. Complainant’s mark is well-known, the services purportedly provided at the website to which the Domain Names resolve are similar to Complainant’s services, and it is plausibly alleged and undisputed that Respondent has pirated content from Complainant’s site. Such conduct does not permit a finding that Respondent has rights or legitimate interests vis-à-vis the Domain Names.

Complainant has established Policy paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

For each of the Domain Names, paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily

for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant
who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable
consideration in excess of its documented out of pocket costs directly related to the Domain Name; or

(ii)       that Respondent has 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 Respondent has
engaged in a pattern of such conduct; or

(iii)      that Respondent has registered the Domain Name primarily for the purpose of disrupting the business

of a competitor; or

(iv)      that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial

gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion
with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website
or location or of a product or service on Respondent’s website or location.

The Panel concludes that Respondent registered and used the Domain Names in bad faith under the Policy. The Panel incorporates its discussion above in the “Rights or Legitimate Interests” section. On this record, the Panel finds it clear that Respondent targeted Complainant’s mark when registering the Domain Names, and has used the Domain Names for illegitimate commercial gain by seeking to divert Internet traffic for commercial gain by free-riding on Complainant’s well-known mark. This constitutes bad faith registration and use within the meaning of the above-quoted Policy paragraph 4(b)(iv).

Complainant has established Policy paragraph 4(a)(iii).

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7. Decision

orders that the Domain Names <freeonlyfans.net> and <onlyleakz.fans> be transferred to Complainant.

/Robert A. Badgley/
Robert A. Badgley
Sole Panelist
Date: March 22, 2024