Fenix International Limited v krerkchai natinun

WIPO Case No. D2024-4688

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Fenix International Limited v. krerkchai natinun

Case No. D2024-4688

1. The Parties

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

States”).

The Respondent is krerkchai natinun, Thailand.

2. The Domain Name and Registrar

The disputed domain name <onlyfansfree.vip> is registered with Dynadot Inc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, on November 15, 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 November 15, 2024.

2024. On November 14, 2024, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain name. On November 15, 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 (Redacted for Privacy, Super Privacy Service
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”).

The Respondent sent an email communication to the Center on November 18, 2024. The Complainant requested a suspension of the proceedings on November 18, 2024. The proceedings were suspended by the Center on November 19, 2024. The Complainant requested a reinstitution of the proceedings on January 21, 2025, and the Center reinstituted the proceedings on January 21, 2025. In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 23, 2025. In accordance with the Rules, paragraph 5, the due date for

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Response was February 12, 2025. The Center commenced the panel appointment process on February 13,
2025.

The Center appointed Andrea Cappai as the sole panelist in this matter on February 19, 2025. 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, Fenix International Limited, owns and operates the website hosted at the domain
<onlyfans.com>. For several years, it has used this domain name to provide a social media platform that
enables users to create, share, and subscribe to audiovisual content online.

The Complainant has held the domain since January 29, 2013, and, by 2024, has gained significant global recognition, reportedly surpassing 180 million registered users and ranking as the 97th most visited website worldwide, according to digital intelligence platform SimilarWeb.

The Complainant owns, among others, the following registered trademarks:

- European Union trademark registration no. 017912377 ONLYFANS, registered on January 9, 2019, for products and services in Class 9, 35, 38, 41, and 42;

- United States trademark registration no. 5769267 ONLYFANS, registered on June 4, 2019, for

services in Class 35;

- International registration no. 1507723 ONLYFANS, registered on November 2, 2019, for goods and services in Class 9, 35, 38, 41, and 42.

The disputed domain name was registered on May 20, 2024.

The disputed domain name resolves to a website offering adult entertainment services. The website contains videos marked with watermarks reading “OnlyFansMax”.

The Complainant issued a cease-and-desist letter to the Respondent but did not receive a reply. No further details regarding the Respondent are available.

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.

Notably, the Complainant contends that it has satisfied all the elements required for a transfer under the Policy, emphasising that the disputed domain name differs from the Mark only by the addition of the term “free”. The Complainant argues that this descriptive element does not reduce the likelihood of confusion and

that the disputed domain name remains confusingly similar to its Mark.

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According to the Complainant, the Respondent has no authorisation, licence, or affiliation to use the Marks in the disputed domain name, is not commonly known by them, and cannot claim fair use. The Complainant further asserts that the inclusion of “free” misleadingly suggests an officially approved or cost-free version of its platform, increasing the risk of consumer deception.

The disputed domain name resolves to a commercial website offering adult entertainment content, which, according to the Complainant, includes material allegedly pirated from some of its users. This conduct places the Respondent in direct competition with the Complainant and supports the conclusion that the Respondent lacks bona fide rights in the domain.

Additionally, the Complainant notes that videos hosted on the Respondent’s website display the watermark
“OnlyFansMax”, which closely resembles its own mark. The presence of such branding, coupled with the
alleged unauthorised use of its content, further reinforces the deceptive nature of the Respondent’s conduct.

In light of the well-established reputation of the Complainant’s Mark, as confirmed by previous UDRP decisions recognising its mark as internationally well-known, the Complainant contends that the Respondent either knew or ought to have known of its rights when registering the disputed domain name.

Finally, the Complainant asserts that the use of a logo resembling the ONLYFANS mark further demonstrates bad faith, both in the registration and use of the disputed domain name, as it suggests an intentional attempt to exploit the Complainant’s reputation.

B. Respondent

The Respondent did not formally reply to the Complainant’s contentions, but in its informal communication stated that they removed the website at the disputed domain name and would not use it further.

6. Discussion and Findings

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 the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms, such as “free”, may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

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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 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 (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.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The structure of the disputed domain name inherently implies an affiliation with the Complainant, thereby creating a risk that Internet users may mistakenly assume that the website to which it resolves is endorsed or authorised by the Complainant.

Under established UDRP practice, using a domain name to host a commercial website that directly competes with the Complainant’s services does not give rise to legitimate rights or interests. Here, the disputed domain name resolves to a website offering similar services, reinforcing the conclusion that the Respondent lacks any bona fide rights in the domain.

Additionally, videos on the Respondent’s website display a watermark mimicking the Complainant’s logo, further reinforcing the deceptive nature of its use. The combination of a confusingly similar domain name and the unauthorised use of a mark resembling the Complainant’s strongly suggests an attempt to mislead

consumers and exploit the Complainant’s reputation.

In light of these factors, the Respondent has failed to demonstrate any legitimate rights or interests in the disputed domain name.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

In the present case, the Panel notes that the Respondent registered the disputed domain name with the intent of misleading Internet users and diverting them from the Complainant’s website for commercial gain. The domain resolves to a platform offering adult entertainment content, including material that appears to be pirated from the Complainant’s own users. Some of these videos are watermarked with a sign confusingly similar to the Complainant’s trademark, further reinforcing the misleading nature of the Respondent’s use.

This conduct is indicative of bad faith under the Policy, particularly noting the Respondent registered the disputed domain name to misappropriate the Complainant’s reputation and redirect users to a competing platform.

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The Panel finds that the Complainant has established 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 name <onlyfansfree.vip> be transferred to the Complainant.

/Andrea Cappai/
Andrea Cappai
Sole Panelist
Date: March 5, 2025