Fenix International Ltd. v Contact Privacy Inc. / Dillon Shamoun

WIPO Case No. D2022-0318

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Fenix International Ltd. v. Contact Privacy Inc. / Dillon Shamoun

Case No. D2022-0318

1. The Parties

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

States”).

The Respondent is Contact Privacy Inc., Canada / Dillon Shamoun, United States.

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2022. On January 31, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 31, 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 2, 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 on February 2, 2022.

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 3, 2022. In accordance with the Rules, paragraph
5, the due date for Response was February 23, 2022. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on February 24, 2022.

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The Center appointed David H. Bernstein as the sole panelist in this matter on March 2, 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 following facts alleged in the Complaint and evidenced by the record are assumed to be true because the Respondent has not filed a Response. Rules, paragraph 14(b); Allianz, Com Compañía de Seguros y Reaseguros S.A. v. John Michael, WIPO Case No. D2009-0942.

The Complainant owns and operates a website at “ which provides a platform for users to post and subscribe to videos and other content. The Complainant holds word and design trademarks for ONLYFANS and its logo in the European Union, the United Kingdom, and the United States. The

Complainant’s earliest registered rights accrued on June 5, 2018. The Complainant registered the <onlyfans.com> domain name on January 29, 2013. It is now a popular website, having 180 million registered users and being among the 500 most popular websites in the world as of January 2022.

On July 23, 2021, the Respondent registered the disputed domain name. The website to which the disputed domain name resolves offers subscriptions to pornographic content in exchange for cryptocurrency and therefore directly competes with the Complainant’s business at “ On November 8, 2021, the Complainant sent a cease-and-desist letter to the Respondent and received no reply.

5. Parties’ Contentions
A. Complainant

The Complainant alleges that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant states that it owns trademark registrations for ONLYFANS in the European Union, the United Kingdom, and the United States and that it has common law rights to that mark. The Complainant contends that the disputed domain name <fansonlycoin.com> is confusingly similar to the Complainant’s trademark because it merely inverts the words in the mark and adds the word “coin”.

The Complainant further alleges that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Complainant states that the Respondent does not hold any trademarks for the disputed domain name, is not commonly known by that name, and is not authorized by the Complainant to use the ONLYFANS trademark. The Complainant contends that the Respondent is not making a fair use of the ONLYFANS trademark, but instead is using the disputed domain to offer video subscriptions that directly compete with the Complainant’s business.

Finally, the Complainant submits that the disputed domain name was registered and is being used by the Respondent in bad faith. The Complainant states that the Respondent registered the disputed domain name after the Complainant’s ONLYFANS trademark was widely known and that the Respondent uses the disputed domain name to compete directly with the Complainant’s business. The Complainant contends that the Respondent’s use of the disputed domain name is a bad faith attempt to profit from the popularity of the Complainant’s trademark. For these reasons, the Complainant asks the panel to cancel the disputed domain name.

B. Respondent

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

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6. Discussion and Findings

Paragraph 4(a) of the Policy provides that, in order to succeed in its claim, the Complainant must prove each of the following three elements:

- first, the disputed domain name is identical or confusingly similar to a trademark or service mark in which
the Complainant has rights;
- second, the Respondent has no rights or legitimate interests with respect to the disputed domain name;
and
- third, the disputed domain name has been registered and is being used in bad faith.

In the absence of a response, the Complainant must still prove each of these elements by a preponderance of the evidence. Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.

A. Identical or Confusingly Similar

The Complainant owns trademark registrations for ONLYFANS. Those registrations prima facie satisfy the
threshold requirement of having trademark rights for purposes of the first element of the Policy. WIPO
Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section
1.2.1.

The disputed domain name is confusingly similar to the Complainant’s registered trademark. The disputed domain name inverts the Complainant’s mark and adds the word “coin”. The inversion of the two words of the trademark that are separately identifiable in the disputed domain name does not prevent the disputed domain name from being confusingly similar to the trademark. Although there may be cases in which

inverting the parts of a compound word produces a new compound that is not easily confused with the first – for example, “overpass” and “Passover” – this is not such a case. The compounds “onlyfans” and “fansonly” convey the same meaning with the same constituent words and are therefore confusingly similar for

purposes of the Policy. See generally WIPO Overview 3.0, section 1.7. As for the addition of the term “coin”, the addition of that word does not prevent a finding of confusing similarity. WIPO Overview 3.0, section 1.8.

B. Rights or Legitimate Interests

To satisfy the second element, a complainant must present a prima facie case that the respondent lacks a legitimate interest in the disputed domain name. Once the complainant makes such a prima facie case, the burden of production shifts to the respondent, although the burden of proof always remains on the complainant. WIPO Overview 3.0, section 2.1.

In this case, the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has registered a domain that is confusingly similar to the Complainant’s well-known mark and used it to offer goods and services that directly compete with the Complainant’s business. That is not a bona fide offering of goods or services. There is no indication in the record that the Respondent is commonly known by the name “fansonly” or “fansonlycoin”, and neither the

disputed domain name nor the website it hosts suggest any possible fair use of the Complainant’s mark. In fact, the website and its logo appear similar to those used by the Complainant, which is further evidence that the Respondent is attempting to profit from confusion with the Complainant’s business.

Because the Respondent has not rebutted this prima facie showing, the Complainant has satisfied its burden of proving that the Respondent lacks rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

To satisfy the third element, a Complainant must prove bad faith registration and use of the disputed domain name on the part of the Respondent. Policy paragraph 4(b) provides a list of nonexclusive circumstances

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that can be evidence of the registration and use of a domain name in bad faith. Long after the Complainant’s
trademark was registered and became well known, the Respondent registered the disputed domain name
and used it to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion
with the Complainant’s mark and website (including by use of the Complainant’s logo). That is paradigmatic

bad faith registration and use. See generally WIPO Overview 3.0, paragraphs 3.1.3 and 3.2.1.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, and in response to the Complainant’s request that the disputed domain name be cancelled (rather than transferred), the Panel orders that the disputed domain name <fansonlycoin.com> be cancelled.

/David H. Bernstein/
David H. Bernstein
Sole Panelist
Dated: March 16, 2022