Fenix International Limited v Wiwat Loedritsomboon

WIPO Case No. D2024-0337

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Fenix International Limited v. Wiwat Loedritsomboon

Case No. D2024-0337

1. The Parties

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

The Respondent is Wiwat Loedritsomboon, Thailand.

2. The Domain Name and Registrar

The disputed domain name <onlyfansmax.com> is registered with Hosting Concepts B.V. d/b/a

Registrar.eu. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2024. On January 26, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 29, 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 January 29, 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 January 29, 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 January 30, 2024. In accordance with the Rules, paragraph
5, the due date for Response was February 19, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on February 20, 2024.

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The Center appointed Andrea Jaeger-Lenz as the sole panelist in this matter on February 28, 2024. 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’s business is to operate and to provide a social media platform that allows Internet users to on January 29, 2013, and use of which has commenced by July 4, 2016. As of 2024, the Complainant’s website under the domain name <onlyfans.com> counts more than 180 million registered users. Apart from the use as domain name, the Complainant uses the trademark ONLYFANS within its website at the domain name <onlyfans.com>.
post and subscribe to audiovisual content on the Internet, including content for adult entertainment. The

The Complainant owns, according to Annex C of the Complaint, several trademarks for ONLYFANS, including but not limited to the following:

- US trademark no 5,769,267 ONLYFANS (word), registered on June 4, 2019, for services in Class
35,

- US trademark no. 6,253,455 ONLYFANS (fat lettering), registered on January 26, 2021, for goods
and services in Classes 9, 35, 38, 41 and 42, and

- European Union (“EU”) trademark no. 17946559 ONLYFANS (black and blue device with blue
keyhole), registered on January 9, 2019, for gods and services in Classes 9, 35, 38, 41, and 42.

The disputed domain name was registered on September 3, 2023. The website to which it resolves offers adult entertainment services including watermarked content pirated from users of the Complainant and displays the trademark ONLYFANS as in the device protected by the above cited EU trademark with the addition of “MAX”, as per Annex E 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 it owns rights in the trademark ONLYFANS. The disputed domain name consists of the Complainant’s exact mark, the only difference being the insertion of the descriptive term “max” between ONLYFANS and <.com>. Thus, according to the Complainant, the relevant trademark is recognizable within the disputed domain name and the addition of other terms would not prevent a finding of confusing similarity. The <.com> Top-Level Domain (“TLD”) does not change this result, as it is a standard registration requirement and as such has to be disregarded. Consequently, the disputed domain name is confusingly similar to a trademark, in which the Complainant owns rights.

On the second element, the absence of rights or legitimate interests on the side of the Respondent, the Complainant argues as follows: The Respondent has no connection or affiliation with the Complainant and has not received any authorization, license or consent to use the Complainant’s mark. The Respondent is not commonly known by the disputed domain name either and does not hold any trademark rights in ONLYFANS. The Complainant claims that its website is – according to a similarweb ranking at Annex D to the Complaint – the 97th most popular website on the internet and the 55th most popular website in the US. Given that the Complainant has achieved global fame and success in a short time, the Respondent knew of the Complainant’s marks, with no evidence indicating that the Respondent be known by the text of the

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disputed domain name. As in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), the Respondent cannot claim any right to use the disputed domain name under fair use, since it includes the mark and the laudatory term “max, which creates a risk of implied

affiliation by suggesting to the users that the content is authorized by the Complainant as top tier “maximum”
or “max” content. The content offered by the Respondent on the disputed domain name is in direct
competition with the Complainant’s services, including “providing entertainment services … in the nature of a
website featuring non-downloadable video, photographs, images, audio, and … in the field of adult
entertainment”. Using a disputed domain name to host goods or services in direct competition with the
trademark owner does not give rise to legitimate rights or interests. This, according to the Complainant, is all
the more true here where content previously published at the Complainant’s website is offered free of charge
by the Respondent, without any remuneration to the Complainant or the respective creators. The intention of
the Respondent to pass off as the Complainant is made evident by the use of an unauthorized
ONLYFANSMAX logo similar to the device of the Complainant.

On the third element, The Complainant claims that the Respondent has registered and used the disputed domain name in bad faith. The Respondent registered the disputed domain name on September 3, 2023, long after registration and first use made by the Complainant of its ONLYFANS mark. According to the

Complainant, its website under the domain name <onlyfans.com> is among the Top 100 most popular evidence of his bad faith.

websites worldwide. Accordingly, the registration of a domain name that is confusingly similar to a
widely-known trademark creates a presumption of bad faith. Previous UDRP Panels have found the
Complainant’s trademark to be internationally known among the relevant public, such that the Respondent
either knew or must have had knowledge of the ONLYFANS trademark before registering the disputed
domain name. Given the altogether adoption of the mark within the disputed domain name, there is no other
conceivable reason for the particular choice of the disputed domain name by the Respondent. Even more
so, he must have been fully aware of it. As to use of the disputed domain name in bad faith, the
Complainant outlines that this is found where a domain name directs users to a website that offers goods
and services in direct competition with the trademark owner for commercial gain by creating a likelihood of
confusion. Pointing to the screen shot of the website of the Respondent under the disputed domain name as
per Annex E of the Complaint, the Complainant argues that the disputed domain name offers adult content in
direct competition to the content offered by the Complainant under the ONLYFANS mark, and that even
using a logo highly similar to that of the Complainant. In addition, the Complainant put the Respondent on
notice of its rights by a warning letter provided in Annex F to the Complaint which remained unanswered.

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 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 Panel finds the mark is clearly and easily recognizable within the disputed domain name, because the ONLYFANS mark is incorporated entirely. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7

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Although the addition of other terms, here “max”, 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.

Accordingly, 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.

Panels have held that the use of a domain name for illegal activity, here, claimed impersonation/passing off as the Complainant, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

Consequently, 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.

In the present case, the Panel notes that the Respondent has registered the disputed domain name considerable time after first use of the domain name <onlyfans.com> by the Complainant and the registration of its ONLYFANS trademarks. As demonstrated by the Complainant’s Annex E, the Respondent uses the disputed domain name for offering adult entertainment to Internet users, services that are identical to the services offered by the Complainant on its website, and even using a logo highly similar to that protected on behalf of the Complainant. The Panel holds it to be inconceivable that all of that is merely accidental.

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.

Panels have held that the use of a domain name for illegal activity, here, claimed impersonation/passing off of the Complainant, 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.

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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 <onlyfansmax.com> be transferred to the Complainant.

/Andrea Jaeger-Lenz/
Andrea Jaeger-Lenz
Sole Panelist
Date: March 13, 2024