Fenix International Limited v Williams Celeb

WIPO Case No. D2024-4864

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Fenix International Limited v. Williams Celeb

Case No. D2024-4864

1. The Parties

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

The Respondent is Williams Celeb, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <onlyfansleaked.xyz> 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 25,
2024. On November 26, 2024, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain name. On November 27, 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) and contact
information in the Complaint. The Center sent an email communication to the Complainant on November 27,
2024, providing the registrant and contact information disclosed by the Registrar, and inviting the
Complainant to submit an amendment to the Complaint. The Complainant did not file an amendment to the

Complaint.

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 December 5, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 25, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 26, 2024.

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The Center appointed Peter Burgstaller as the sole panelist in this matter on January 6, 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.

Although the Complainant did not file an amendment to the Complaint regarding the Registrar’s disclosed registrant and contact information which differed from the named Respondent in the Complaint, this Panel will proceed the case against the disclosed Registrant as the only Respondent.

4. Factual Background

The Complainant provides a social media platform that allows users to post and subscribe to audiovisual content. It operates its platform under the domain name <onlyfans.com> and has used its domain name for several years; the Complainant’s website under <onlyfans.com> is extensively used and visited around the world (Annex B and D to the Complaint).

The Complainant further owns several trademark registrations containing the mark ONLYFANS, inter alia

- European Union trademark registration (word) for ONLYFANS, Reg. No. 17912377, registered on
January 9, 2019;

- United Kingdom trademark registration (word) for ONLYFANS, Reg. No. UK00917912377, registered on January 9, 2019;

- United States of America trademark registration (word) for ONLYFANS, Reg. No. 5,769,267,

registered on June 4, 2019 (Annex C to the Complaint).

The disputed domain name was registered on April 3, 2024 (Annex A to the Complaint); at the time of filing the Complaint the disputed domain name resolved to a website displaying adult entertainment services in direct competition with the Complainant’s services (Annex E to the Complaint).

On July 24, 2024, the Complainant sent a cease-and-desist letter to the Respondent – the Respondent did not reply (Annex F to the Complaint).

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 the ONLYFANS trademark has achieved global fame and success in a short time in the field of social media. The Complainant notes that the disputed domain name contains the ONLYFANS trademark in its entirety, simply adding the descriptive term “leaked”, which would not prevent a finding of confusing similarity.

The Complainant submits that it is therefore inconceivable that the Respondent would not have been aware of the Complainant’s trademark when registering the disputed domain name, or that there would be any legitimate use for the disputed domain name. Further, the Complainant contends that it has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the ONLYFANS trademark in any manner.

The Complainant notes that the disputed domain name is actively used for offering competing services than
those to the Complainant’s services, available on the Complainant’s website under the domain name
<onlyfans.com>.

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Hence, the Complainant contends, that based on the totality of these factors, it is clear that the Respondent is acting in bad faith with the intent to create a likelihood of confusion with the Complainant’s mark and legitimate e-commerce website as well as mislead and divert visitors away from the Complainant’s business.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove 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 with respect to 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

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 submitted evidence, which incontestably and conclusively establishes rights in the mark
ONLYFANS especially through trademark registrations.

In the present case the disputed domain name is confusingly similar to the ONLYFANS trademark as the trademark is recognizable within the disputed domain name.

It has long been established under UDRP decisions that the mere addition of terms, does not prevent a finding of confusing similarity under the first element of the Policy if the relevant mark remains recognizable within the disputed domain name (WIPO Overview 3.0, section 1.8). This is the case at present.

Finally, it has also long been held that generic Top-Level Domains (“gTLD”), here: “.xyz”, are generally
disregarded when evaluating the confusing similarity between a disputed domain name and a trademark.

WIPO Overview 3.0, section 1.11.

Based on the available record, 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.

While 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 often impossible 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. If the respondent fails to

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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 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, since it has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the

ONLYFANS mark in any manner.

The Respondent did not reply to a cease-and-desist letter by the Complainant and to the Complaint and hence has not rebutted the Complainant’s contentions.

The Complainant focuses on the fact that its trademark is well known in the field of providing a social media platform that allows users to post and subscribe to audiovisual content on the Internet.

Further, the Respondent did not come forward with any evidence showing that it is commonly known under the disputed domain name or that it has rights or legitimate interests in the disputed domain name: Given the fact that the disputed domain name resolved to a website where competing services than those of the Complainant’s were provided affirms the Respondent’s intention of taking unfair advantage of the inherent confusion between the disputed domain name and the Complainant as to the origin or affiliation of the website at the disputed domain name.

Based on the available record, the Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

As stated in many decisions rendered under the Policy, both conditions, registration and use in bad faith, must be demonstrated; consequently, the Complainant must show that:

-	the disputed domain name was registered by the Respondent in bad faith, and
-	the disputed domain name is being used by the Respondent in bad faith.
(i)	The Complainant established rights in the mark ONLYFANS, long before the registration of the

disputed domain name. The disputed domain name resolved to a website where similar/competing services

than those of the Complainant were provided.

The Complainant’s trademark ONLYFANS has been recognized in numerous previous cases decided
under the Policy as “internationally well-known amongst the relevant public”. See Fenix International
Limited c/o Walters Law Group v. WhoisGuard, Inc., WhoisGuard Protected / Marry Mae Cerna, WIPO
Case No. D2021-0327.

Further, previous panels have consistently found that the registration of a domain name that is confusingly similar to a widely-known trademark, creates a presumption of bad faith.

Hence, it is inconceivable for this Panel that the Respondent has registered and used the disputed domain name without knowledge of the Complainant’s rights, which leads to the necessary inference of bad faith.

In fact, the Respondent registered the disputed domain name which entirely reproduces the Complainant’s
well-known trademark ONLYFANS, alongside the term “leaked”, which shows that the Respondent has
targeted the Complainant, which constitutes bad faith. WIPO Overview 3.0, section 3.2.1; see also L’Oréal
v. Contact Privacy Inc. Customer 0149511181 / Jerry Peter, WIPO Case No. D2018-1937; Gilead Sciences
Ireland UC / Gilead Sciences, Inc. v. Domain Maybe For Sale c/o Dynadot, WIPO Case No. D2019-0980;
Dream Marriage Group, Inc. v. Romantic Lines LP, Vadim Parhomchuk, WIPO Case No. D2020-1344; and
Valentino S.p.A. v. Qiu Yufeng, Li Lianye, WIPO Case No. D2016-1747; Fenix International Limited v.

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Withheld For Privacy Purposes, Privacy service provided by Withheld for Privacy ehf/ Kazi Otr, WIPO Case
No. D2021-2498.

All of these facts indicate that the Respondent must have been aware of the Complainant’s business and trademark when registering the disputed domain name.

Therefore, the Panel is convinced that the disputed domain name was registered in bad faith by the
Respondent.

(ii) The Complainant put forward evidence that the disputed domain name resolved to a website where competing and similar services were offered than those of the Complainant’s under <onlyfans.com>.

In doing so, the Respondent intentionally attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark ONLYFANS as to the source, sponsorship, affiliation or endorsement of its website according to paragraph 4(b)(iv) of the Policy – this constitutes bad faith registration and use of the disputed domain name.

The Respondent did not rebut these contentions, neither by replying to the Complaint nor answering to a cease-and -desist letter sent by the Complainant.

Based on the available record, 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.xyz> be transferred to the Complainant.

/Peter Burgstaller/
Peter Burgstaller
Sole Panelist
Date: January 20, 2025