Fenix International Limited v sumon das, sumondas

WIPO Case No. D2024-4663

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Fenix International Limited v. sumon das, sumondas

Case No. D2024-4663

1. The Parties

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

The Respondent is sumon das, sumondas, Bangladesh.

2. The Domain Name and Registrar

The disputed domain name <onlyfansleaked.info> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2024. On November 13, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 13, 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, Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on November 14, 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 14, 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 November 18, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 8, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 9, 2024.

The Center appointed Tommaso La Scala as the sole panelist in this matter on December 12, 2024. The
Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

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

Rules, paragraph 7.

4. Factual Background

The Complainant provides since 2016 a well-known social media platform service allowing users to post and subscribe to audiovisual content, under the ONLYFANS trademark.

The Complainant’s website is one of the most popular websites in the world, with over 180 million registered users in 2024.

The Complainant owns several trademark registrations for ONLYFANS, including:

- European Union (“EU”) trademark registration No. 017912377, ONLYFANS (word), filed on June 5, 2018,
and registered on January 9, 2019;
- EU trademark registration No. 017946559, ONLYFANS (device), filed on August 22, 2018, and registered
on January 9, 2019;
- US trademark registration No. 5769267, ONLYFANS (word), filed on October 29, 2018, and registered on

June 4, 2019.

The Complainant also owns the domain name <onlyfans.com> since January 29, 2013.

The disputed domain name was registered on March 20, 2024, and - at the time of filing of the Complaint - resolved to a website offering adult entertainment services (including watermarked content pirated from some of the Complainant’s users), in direct competition with the Complainant’s services.

The Complainant sent a cease-and-desist letter to the Respondent, to which the latter did not reply.

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, namely:

- the disputed domain name is identical or confusingly similar to the ONLYFANS trademark, with the mere
addition of the descriptive verb “leaked”, and this circumstance creates a likelihood of confusion for Internet

users;

- the Respondent has no rights or legitimate interests in the disputed domain name and is not commonly

known by the disputed domain name;

- the Respondent registered the disputed domain name long after the Complainant had established its
trademark rights and – since the website associated with the disputed domain name offered adult
entertainment content (directly competing with the Complainant’s services for which the ONLYFANS

trademark has been registered worldwide) – its bad faith is clear;

- despite a cease-and-desist letter sent to the Respondent, the latter did not reply to the Complainant's
contentions and this circumstance would strengthen the case for bad faith.

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B. Respondent

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

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.

The Panel finds the addition of terms such as “leaked” does not prevent a finding confusing similarity
between the disputed domain name and the mark for the purposes of the Policy (see WIPO Overview 3.0,
section 1.8. See, in this regard, Fenix International Limited v. Host Master, 1337 Services LLC, WIPO Case
No. D2021-2652 for <onlyfansleaked.org> and Fenix International Limited v. Withheld For Privacy Purposes,
Privacy service provided by Withheld for Privacy ehf/ Kazi Otr, WIPO Case No. D2021-2498 for

<leakedonlyfans.xyz>).

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.

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.

Here, the Panel notes that the use of the disputed domain name for offering adult entertainment contents competing with the ones offered by the Complainant under the ONLYFANS trademark (and even including watermarked content pirated from some of the Complainant’s users) does not confer rights or legitimate interests on the Respondent.

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

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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.

In the present case, the Panel notes that the Respondent was aware of the existence of the Complainant and its activities before the registration of the disputed domain name, provided that:

- The Complainant is a company renown at international level for providing social media platform services

allowing Internet users to post and subscribe to audiovisual content;

- The disputed domain name is currently used to display adult entertainment services (including watermarked
content pirated from some of the Complainant’s users) in direct competition with the Complainant’s services

offered under the ONLYFANS trademark;

- The disputed domain name was registered to attract Internet users for the Respondent’s likely commercial
gain, deceiving Internet users by letting them erroneously believe there is a relation with the ONLYFANS

trademark, which is not true;

- The Respondent registered the disputed domain name long after the filing of the ONLYFANS trademark;

- The Respondent did not reply to the cease-and-desist letter sent by the Complainant, nor it has filed a
response to the Complaint evidencing having rights in the disputed domain name.

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.

The Panel finds that the use of the disputed domain name for illegitimate activity such as the offering of competing adult entertainment content, including pirated content, constitutes bad faith. WIPO Overview 3.0, section 3.4.

Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain
name constitutes bad faith under the Policy. In view of the above, the Panel determines that the
Complainant has proven the registration and use of the disputed domain name in bad faith, as set forth in the
Policy, WIPO Overview 3.0, section 3.1.4, and Kik Interactive Inc. v. Nestor Hernandez, WIPO Case No.

D2016-0738.

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 <onlyfansleaked.info> be transferred to the Complainant.

/Tommaso La Scala/
Tommaso La Scala
Sole Panelist
Date: December 26, 2024