Fenix International Limited v Domain Admin, Beacons AI Inc

WIPO Case No. D2024-0113

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Fenix International Limited v. Domain Admin, Beacons AI Inc.

Case No. D2024-0113

1. The Parties

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

States”).

The Respondent is Domain Admin, Beacons AI Inc., United States.

2. The Domain Name and Registrar

The disputed domain name <httpsonlyfans.org> is registered with Name.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2024.
On January 12, 2024, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On January 12, 2024, 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 (Non-Public Data) and contact information in the Complaint. The
Center sent an email communication to the Complainant on January 17, 2024, 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 January 17, 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 the Respondent of the
Complaint, and the proceedings commenced on January 24, 2024. In accordance with the Rules, paragraph
5, the due date for Response was February 13, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on February 15, 2024.

The Center appointed Andrew J. Park as the sole panelist in this matter on February 23, 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

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4. Factual Background

The Complainant, Fenix International Limited, owns and operates the domain name <onlyfans.com> and has used its domain name for multiple years in connection with the provision of a social media platform that allows Internet users to post and subscribe to audiovisual content on the Internet. It is a platform that empowers a diverse range of content creators to achieve their full potential, monetize their content, and develop authentic connections with their fans. The website hosted at the domain name <onlyfans.com> currently has more than 180 million registered Internet users.

In providing its services, the Complainant has made extensive use of the ONLYFANS trademark. The Complainant has registered rights in its trademark with the European Union Intellectual Property Office (“EUIPO”), the United Kingdom Intellectual Property Office (“UKIPO”), and the United States Patent and

Trademark Office (“USPTO”). Also, the Complainant has developed extensive common law rights in

ONLYFANS throughout the world.

The Complainant has obtained the following trademark registrations:

Jurisdictions	Trademarks	Registration Numbers	Registration Date
ONLYFANS	017912377	January 9, 2019
EUIPO
ONLYFANS	017946559	January 9, 2019
ONLYFANS	UK00917912377	January 9, 2019
UKIPO	UK00917946559	January 9, 2019
ONLYFANS	5769267	June 4, 2019
ONLYFANS.COM	5769268	June 4, 2019
OFTV	6918292	December 6, 2022
USPTO	6253455	January 26, 2021
6253475	January 26, 2021
6918293	December 6, 2022
6918294	December 6, 2022
International	1509110	November 2, 2019
ONLYFANS	1507723	November 2, 2019

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(b) the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant
asserts that:

(i)        The Respondent has no connection or affiliation with the Complainant and has not received any authorization, license, or consent, either express or implied, to use the Complainant’s trademark in the disputed domain name or in any manner.

(ii)       The Respondent is not commonly known by the disputed domain name and does not hold any trademark for the disputed domain name.

(iii)      The Respondent’s use of the disputed domain name, which incorporates the Complainant’s trademark together with the additional term “https” does not qualify as fair use, especially when such usage falsely suggests or implies endorsement or sponsorship by the Complainant. Consequently, the Respondent’s inclusion of the term “https”, the common communication protocol abbreviation in the disputed domain name appears to constitute an attempt to divert traffic for commercial gain.

(iv)      The Respondent is using the disputed domain name to host a commercial website that advertises goods and services in direct competition with the Complainant that does not give rise to rights or legitimate interests.

These factors collectively serve as evidence that the Respondent has no right or legitimate interests in the disputed domain name.

(c) the disputed domain name was registered and is being used in bad faith. Firstly, the Complainant claims reputation and generating likelihood of confusion between the disputed domain name and the Complainant’s trademark. Moreover, the Complainant alleges that the inclusion of the Complainant’s trademark alongside the descriptive term “https” in the disputed domain name could be construed as typosquatting.
that the Respondent has registered the disputed domain name in bad faith. The Complainant asserts that
the Respondent registered the disputed domain name with full knowledge of the Complainant’s trademarks
and business activities, given that the Complainant’s trademark registrations precede the registration of the
disputed domain name that is confusingly similar to the Complainant’s widely-known trademark, ONLYFANS.

The Complainant sent a cease-and-desist letter to the Respondent on September 28, 2023, but the Respondent failed to respond. The Complainant alleges that this failure to respond further supports the assertion of bad faith registration. All these factors collectively provide evidence of the Respondent’s registration of the disputed domain name in bad faith.

Secondly, the Complainant claims that the Respondent is using the disputed domain name in bad faith. The Respondent created a website to which the disputed domain name resolved to divert Internet traffic from the Complainant’s official website by offering adult entertainment subscription services in direct competition with the Complainant’s services. Such use is an intentional attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark as to the source, affiliation, or endorsement of the disputed domain name. Therefore, the Complainant alleges again that the disputed domain name was registered and is being used by the Respondent in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

This element consists of two parts: first, whether the Complainant has rights in a relevant trademark and, second, whether the disputed domain name is identical or confusingly similar to that trademark.

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The Panel finds that the Complainant has established registered rights in the trademark ONLYFANS and that
the disputed domain name is nearly identical to the Complainant’s trademark. The Panel also finds that the
Complainant’s trademark ONLYFANS is nearly identical with the main element in the disputed domain name,
and the only difference between the disputed domain name and the Complainant’s trademark is that the
disputed domain name has the additional term “https” along with the Complainant’s trademark. Adding
“https” does nothing to prevent a finding of confusing similarity to the Complainant’s trademark since it may
be disregarded when assessing confusing similarity under the first element of the Policy. See section 1.8 of
the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Overview 3.0”). Similarly, the addition of the gTLD “.org” is a standard registration requirement and
as such it may be disregarded when assessing confusing similarity under the first element of the Policy.
WIPO Overview 3.0, section 1.11.1.

For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the Respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. WIPO Overview 3.0, section 2.1.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish its rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable
preparations to use, the disputed domain name or a name corresponding to the disputed domain name in

connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the

disputed domain name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without
intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at

issue.

Here, the Panel finds that the Complainant has made out a prima facie case.

The Panel finds that the Respondent has no relationship with or authorization from the Complainant to use which combines the Complainant’s trademark with the term “https” that is a standard technical protocol for website URLs to send data between a web browser and a website, it appears that the Respondent sought to impersonate the Complainant’s genuine domain name hosted at the URL, “ All of these facts demonstrate that the Respondent never had an intention to use the disputed domain name in connection with a bona fide offering of goods or services.

its trademark. There is nothing in the record to suggest that the Respondent has made a legitimate
noncommercial or fair use of the disputed domain name or has been commonly known by the disputed
domain name. Also, there is no evidence that the Respondent has the intention to use the disputed domain
name in connection with a bona fide offering of goods or services. The Respondent registered the disputed
domain name and created a website using the disputed domain name, which is purportedly offering products
or services identical or related to those of the Complainant all in an effort to confuse Internet users or
consumers about the relationship between the Respondent and the Complainant and all without the

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The Panel’s view is that these facts may be taken as true in the circumstances of this case in view of the use of the disputed domain name. Further, the Panel is unable to find any reasonable basis upon which the Respondent could be said to have any rights or legitimate interests in respect of the disputed domain name, and the Respondent has not filed a Response.

Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name pursuant to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following is sufficient to support a finding of bad faith:

(i) circumstances indicating that the respondent has registered or 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 the complainant, for valuable

consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain

name; or

(ii) the 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 the respondent has engaged

in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a

competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

The Complainant claims that the Respondent registered and is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). Specifically, the Complainant insists that the Respondent violated the Policy, paragraph 4(b)(iv) by registering the disputed domain name in order to attempt to attract, for commercial gain, Internet users to the Respondent’s website which the disputed domain name resolves to by creating a likelihood of confusion with the Complainant’s trademark.

As stated previously, the Respondent did not file any response to the Complaint, failing thereby to rebut the Complainant’s allegations of the Respondent’s bad faith registration and use of the disputed domain name.

Nevertheless, the Panel still has the responsibility of determining which of the Complainant’s assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University, WIPO Case No. D2000-0944).

First, the Panel finds the Respondent intentionally registered the disputed domain name in bad faith. The Respondent registered the disputed domain name, which is confusingly similar to the Complainant’s ONLYFANS trademark, while aware of the Complainant’s business and its trademarks. The Complainant registered the domain name <onlyfans.com> on January 29, 2013, establishing common law rights in the mark worldwide by virtue of its continuous use of ONLYFANS from July 4, 2016 onwards. Furthermore, the Complainant’s trademark registration predates that of the Respondent’s registration of the disputed domain name. Given that the disputed domain name incorporates the Complainant’s trademark entirely and could be considered a typosquatting variation of the URL for the Complainant’s main website as mentioned above, it is evident that the Respondent possessed knowledge of the Complainant’s trademark and its reputation at the time of registration. The registration seemingly attempted to create an association between the disputed domain name and the Complainant’s business, exploiting the likelihood of confusion with the Complainant’s trademark for its benefit.

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This registration of the disputed domain name that reproduces the Complainant’s trademark in its entirety and is confusingly similar to such trademark by the Respondent that has no relationship to that mark, without any reasonable explanation on the motives for the registration, may be suggestive of opportunistic bad faith. See Ebay Inc. v. Wangming, WIPO Case No. D2006-1107; and Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.

Second, the website to which the disputed domain name resolves is purportedly offering products and services which are identical to those of the Complainant. The Panel finds that the Respondent attempted to attract, for commercial gain, Internet users including the Complainant’s customers to its infringing website by creating a likelihood of confusion with the Complainant’s trademark.

Accordingly, the evidence shows that the Respondent likely knew of and had sought to take unfair advantage of the confusing similarity between the disputed domain name and the Complainant’s trademarks all for commercial gain. The Panel concludes that the Respondent registered and is using the disputed domain name in bad faith.

As the conduct described above falls squarely within paragraph 4(b)(iv) of the Policy, the Panel concludes that the Respondent registered and is using the disputed domain name in bad faith pursuant to the Policy, paragraph 4(a)(iii).

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 <httpsonlyfans.org> be transferred to the Complainant.

/Andrew J. Park/
Andrew J. Park
Sole Panelist
Date: March 11, 2024

The Complainant registered the domain name <onlyfans.com> on January 29, 2013, and has extensive legal rights in the ONLYFANS mark throughout the world that commenced by, at latest, July 4, 2016.

The disputed domain name was registered on August 21, 2023, which resolved to a website that the mimics the Complainant’s website and features unauthorized, infringing, and counterfeit use of the Complainant’s trademark in connection with services that are similar to those of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name because:

(a) the disputed domain name is identical or confusingly similar to the Complainant’s trademark ONLYFANS in which the Complainant has rights. The Complainant contends that the disputed domain name consists of the Complainant’s exact trademark, ONLYFANS, with the only difference being the insertion of the term,

“https”, before the Complainant’s trademark, which does nothing to avoid confusing similarity. Also, the into account to assess similarity and therefore, it does not change the result that the Complainant’s trademark is clearly recognizable in the disputed domain name which should be considered as confusingly similar to the Complainant’s trademark.