Fenix International Limited v Whois Privacy, Private by Design, LLC /

WIPO Case No. D2022-0221

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Fenix International Limited v. Whois Privacy, Private by Design, LLC /
Irina Guerrant

Case No. D2022-0221

1. The Parties

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

(“United States”).

The Respondent is Whois Privacy, Private by Design, LLC, United States / Irina Guerrant, United States.

2. The Domain Name and Registrar

The disputed domain name <onlyfansbreach.com> is registered with Porkbun LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2022. On January 24, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 7, 2022, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on February 7, 2022, 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 the same day.

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 February 11, 2022. In accordance with the Rules,
paragraph 5, the due date for Response was March 3, 2022. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on March 8, 2022.

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The Center appointed William F. Hamilton as the sole panelist in this matter on March 11, 2022. 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 Respondent and the Complainant are based in the United States. The Complainant owns registrations
in numerous countries for the trademark ONLYFANS (the “Mark”), the earliest of which is United States
Patent and Trademark Office Reg. No. 5769267, registered on June 4, 2019. In addition to ONLYFANS, the

Complainant owns numerous trademark registrations for the trademark ONLYFANS.COM.

The Complainant owns and operates the popular website “ which has more than 180
million registered users. The Complainant’s website features recorded online performances posted by
“creators”. “Fans” subscribe to view the creator’s content. Fenix International Limited v. Privacy Service

Provided by Withheld for Privacy ehf / Andrei Ivanov, WIPO Case No. D2021-3384.

The disputed domain name was registered on July 8, 2021. The Complainant sent a cease-and-desist letter
to the Respondent on November 18, 2021. There was no response to the cease-and-desist letter. The
Complainant subsequently initiated this proceeding. The disputed domain name resolved to a website
offering adult entertainment services including advertisements for free viewing of videos pirated from the

Complainant’s website.

5. Parties’ Contentions
A. Complainant

The Complainant asserts the disputed domain name is confusingly similar to the Mark because the dispute domain name is composed of the Mark and the descriptive term “breach” utilized as a suffix.

The Complainant asserts that the Complainant never authorized the Respondent to use the disputed domain name, that the Respondent is not generally known by the disputed domain name, and that the Respondent has never engaged in any bona fide commercial activity in connection with the disputed domain name.

The Complainant further asserts that the disputed domain name was registered in bad faith to confuse and direct unsuspecting Internet users seeking the Complainant’s website to the Respondent’s website.

Accordingly, the Complainant requests the disputed domain name be cancelled.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that:

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

Complainant has rights;

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

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

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s Mark.

The Complainant asserts the disputed domain name is confusingly similar to the Mark because the dispute domain name is composed of the Mark and the term “breach”. A domain name which wholly incorporates a complainant’s registered mark is sufficient to establish confusingly similarity for the purposes of the Policy

when, as here, the Mark is a clearly recognizable within the disputed domain name notwithstanding the
addition of another term. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Overview 3.0”), section 1.8 (“where the relevant trademark is recognizable within the disputed
domain name, the addition of other terms (whether descriptive, geographic, pejorative, meaningless, or
otherwise) would not prevent a finding of confusing similarity under the first element”); Regeneron
Pharmaceuticals, Inc. v. Registration Private, Domains by Proxy, LLC / Regeneron Careers, WIPO Case
No. D2017-0013; and Bombas LLC v. Domain Administrator, See PrivacyGuardian.org / Maryellen J Dillard,

Maryellen Dillard, WIPO Case No. D2021-0609.

The generic Top-Level Domain (“gTLD”) of a disputed domain name is disregarded for the purposes of
assessment under the first element. The gTLD is a standard registration requirement. See WIPO Overview
3.0, section 1.11.1; Monster Energy Company, a Delaware Corporation v. J.H.M. den Ouden, WIPO Case
No. D2016-1759; and International Business Machines Corporation v. Sledge, Inc. / Frank Sledge, WIPO

Case No. D2014-0581.

The Complainant has met its burden under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has specifically disavowed providing the Respondent with permission to use the disputed domain name or the Mark. The Respondent is not affiliated with the Complainant in any way and does not have any business relationship with the Complainant. There is no evidence that the Respondent has

conducted any bona fide business under the disputed domain name or is commonly known by the disputed
domain name. Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020.

The Complainant has thus established a prima facie case in its favor, which shifts the burden of production on this point to the Respondent. The Respondent, however, has failed to come forth with any evidence showing any rights or legitimate interests in the disputed domain name. Due to the similarity of the disputed domain name and the Complainant’s Mark, the Complainant asserts that there is a risk of implied affiliation.

The facts and circumstances presented to the Panel demonstrate that the Respondent does not have any rights or legitimate interests in the disputed domain.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, bad faith may be established by any one of the following scenarios:

(i) circumstances indicating that the respondent has registered or acquired the disputed domain name
primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant
who is the owner of the trademark or service mark or to a competitor of that 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 disputed 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

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

business of a competitor; or

(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial
gain, Internet users to its website or other online location, by creating a likelihood of confusion with the
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 Panel finds the disputed domain name was registered and is being used in bad faith.

Common sense compels the conclusion that the Respondent was quite aware of the Complainant’s Mark when registering the disputed domain name. The disputed domain name resolves to a website brazenly advertising the availability of content pirated from the Complainant’s website. Moreover, the use of the term

“breach” in forming the disputed domain name suggests the likelihood of pirated content. Indeed, The with the Complainant’s product offering.

Even if one were to accept the unbelievable proposition that the Respondent was unaware of the Mark, willful blindness is no excuse and does not avoid a finding of bad faith registration and use. Instagram, LLC v. Contact Privacy Inc. / Sercan Lider, WIPO Case No. D2019-0419. A simple Internet search, normally undertaken before registering a domain name, would have disclosed the Complainant’s Mark.

Given the wholesale adoption of the Mark in the disputed domain name, it is difficult to conceive of any use that the Respondent might make of the disputed domain name without the Complainant’s consent that would not involve bad faith. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909 (where the reputation of a complainant in a given mark is significant and the mark bears strong similarities to the disputed domain name, the likelihood of confusion is such that bad faith may be inferred); DPDgroup International Services GmbH & Co. KG v. Wise One, Wilson TECH, WIPO Case No. D2021-0109; and Monster Energy Company v. PrivacyDotLink Customer 116709 / Ferdinand Nikolaus Kronschnabl, WIPO Case No. D2016-1335.

Additionally, under the circumstances of this case, an adverse inference may be drawn from the shield. See WIPO Overview 3.0, sections 3.6 and 4.3.

Respondent’s failure to take part in the present proceeding, the Respondent’s failure to respond to the

The Complainant has met its burden under paragraph 4(a)(iii) 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 <onlyfansbreach.com> be cancelled.

/William F. Hamilton/
William F. Hamilton
Sole Panelist
Date: March 24, 2022