Fenix International Limited v Privacy Services Provided by Withheld for

WIPO Case No. D2022-1897

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Fenix International Limited v. Privacy Services Provided by Withheld for
Privacy ehf / Rob Visser

Case No. D2022-1897

1. The Parties

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

The Respondent is Privacy Services Provided by Withheld for Privacy ehf, Iceland / Rob Visser, Netherlands.

2. The Domain Name and Registrar

The disputed domain name <onlycams.vip> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 25, 2022. On
May 28, 2022, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On May 28, 2022, the Registrar transmitted by email to the

Center its verification response confirming that:

(a) the disputed domain name is registered with it;
(b) the language of the registration agreement is English; and

(c) the Respondent is listed as the registrant and providing the contact details.

The Center verified that 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 June 2, 2022. In accordance with the Rules, paragraph 5, the due date for Response was June 22, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 23, 2022.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on July 4, 2022. The Panel
finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration

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of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph

7.

4. Factual Background

Since January 2013, the Complainant has been operating a website at “ which provides a social media platform enabling users to post and subscribe to audio-visual content on the World Wide Web.

By 2022, the Complainant’s website has more than 180 million registered users. According to Alexa Internet, the Complainant’s website is the 177th most popular website on the World Wide Web and the 75th most popular website in the United States.

Amongst other things, the Complainant holds a number of registered trademarks around the world for

ONLYFANS including:

(a) United Kingdom Registered Trademark No. UK017912377, which has been registered with effect from

June 5, 2018 in respect of a range of goods and services in International Classes 9, 35, 38, 41 and 42;

(b) European Union Registered Trade Mark No. EU017912377, which has also been registered with effect
from June 5, 2018 in respect of a range of goods and services in International Classes 9, 35, 38, 41 and 42;

and

(c) United States Registered Trademark No. 5,769,267, which was registered in the Principal Register on
June 4, 2019 in respect of “arranging subscriptions of the online publication of others” in International Class

35, and claiming to have been first used in commerce in the United States in April 2016.

Registrations of this trademark have also been pursued in numerous other countries around the world.

The disputed domain name was registered on July 28, 2020.

It resolves to a website providing highly explicit pornographic content. In at least one case in the examples included in the annexures to the Complaint, the image or stream features an overlay of the Complainant’s trademark in logo form.

The website uses a similar light blue and white colour scheme to the colour scheme used on the banner headline while the word “Cams” is depicted in blue against a white background.

5. Discussion and Findings

No response has been filed. The Complaint and Written Notice have been sent, however, to the Respondent or its case.

at the electronic and physical coordinates confirmed as correct by the Registrar in accordance with
paragraph 2(a) of the Rules. The courier attempting delivery of the Written Notice was unable to complete
delivery. Bearing in mind the duty of the holder of a domain name to provide and keep up to date correct

When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the

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Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.

There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark at the date the Complaint was filed and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.

The Complainant has proven ownership of numerous registered trademarks for ONLYFANS. Moreover, given the number of registered users and the website’s ranking as measured by Alexa Internet, the Panel accepts its trademark is very well known.

The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. This test is narrower than and thus different to the question of “likelihood of confusion” under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy, e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

In undertaking that comparison, it is permissible in the present circumstances to disregard the generic
Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system. WIPO Overview
3.0, section 1.11.

Disregarding the “.vip” gTLD, the disputed domain name can be seen as consisting of the first term comprised in the Complainant’s trademark and an abbreviation for the word “cameras”. The Complainant points out that prior panels have frequently found that a mere abbreviation of a trademark is insufficient to avoid a finding of confusing similarity.

The Complainant further contends that the term “only” is the first and most significant component of its trademark. Bearing in mind that “only” is an ordinary English word in common usage, the level of acquired secondary meaning in that term would need to be very high. The size and extent of the Complainant’s user base very likely crosses that threshold. In that connection, the Complainant points out that a number of previous decisions under the Policy have found domain names which have used only one or other component confusingly similar to the Complainant’s trademark. See e.g. Fenix International Limited v. Privacy service provided by Withheld for Privacy ehf / Nemanja Krecelj, WIPO Case No. D2022-0216 (<leakedonly.com>); Fenix International v. Privacy Service Provided by Withheld for Privacy ehf / Eduardo Guerrero Romero, WIPO Case No. D2021-3180 (<onlypacks.net>); Fenix International Limited v. Privacy Service Provided by Withheld for Privacy ehf / Pablo Espinoza, WIPO Case No. D2021-3200 (<only-mega- packs.com>) and Fenix International Limited v. Nemanja Krecelj, Rocket Science Group, WIPO Case No. D2021-2667 (<leakedfanscontent.com>).

Moreover, it has been recognised that, while the content of a website is usually disregarded, it is permissible to take into account the content of the website, to the extent there is any doubt, where it appears that the Respondent is seeking to target the Complainant’s trademark. See e.g. WIPO Overview 3.0 section 1.15. Having regard to that content as briefly summarised in section 4 above, including in particular the get-up as well as the graphic content, the Panel considers it likely a user on the Internet would think there was an association between the Respondent’s website and the Complainant and its trademark.

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Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the
Respondent has rights or legitimate interests in a disputed domain name:

(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 [the Respondent] 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.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainant. See e.g., WIPO Overview 3.0, section 2.1.

The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it.

The disputed domain name is not derived from the Respondent’s name. Nor is there any suggestion of
some other name by which the Respondent is commonly known from which the disputed domain name could
be derived. From the available record, the Respondent does not appear to hold any trademarks for the
disputed domain name.

The Respondent registered the disputed domain name well after the Complainant began using its trademark and also after the Complainant had registered its trademark. As already discussed in section 5A above, having regard to the content of the website to which the disputed domain name resolves, it appears that the disputed domain name and website are targeting the Complainant’s trademark and service.

Using a disputed domain name which is confusingly similar to the Complainant’s trademark to provide a service in competition with, or parasitic on, the Complainant’s service provided by reference to that trademark does not constitute a good faith offering of goods or services for the purposes of the Policy. Nor can the use made by the Respondent in this proceeding qualify as a legitimate noncommercial or fair use within the scope of paragraph 4(c)(iii) of the Policy.

These matters, taken together, are sufficient to establish a prima facie case under the Policy that the
Respondent has no rights or legitimate interests in the disputed domain name. The basis on which the
Respondent has adopted the disputed domain name, therefore, calls for explanation or justification. The
Respondent, however, has not sought to rebut that prima facie case or advance any claimed entitlement.

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Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.

C. Registered and Used in Bad Faith

Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.

Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.

Given the high recognition of the Complainant’s trademark, its extensive user base and the use of very
similar get-up to the colour scheme of the Complainant’s website, the Panel finds that it was very likely the
Respondent was aware of the Complainant’s trademark when registering the disputed domain name.

There is a strong and unrebutted inference that the Respondent registered the disputed domain name with that knowledge to provide a service in competition with or parasitic on the Complainant’s own service. That clearly qualifies as registration in bad faith under the Policy. And the deployment of the disputed domain

name for that purpose constitutes use in bad faith.

In circumstances where the Respondent has not sought to claim, let alone establish, that he has rights or legitimate interests in the disputed domain name, therefore, the Panel finds the Respondent has registered and used it in bad faith.

Accordingly, the Complainant has established all three requirements under the Policy.

6. 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, <onlycams.vip>, be cancelled.

/Warwick A. Rothnie/
Warwick A. Rothnie
Sole Panelist
Date: July 18, 2022