WIPO, D2022-3002, October 27, 2022, Fenix International Limited c/o Walters Law Group vs. private registry operator, Privacy Protect, LLC (PrivacyProtect.org), privacy service provided by Withheld for Privacy ehf, Global Domain Privacy Services Inc. (PrivacyGuardian.org), Andrew Rew, Okoth Nigel, Chaker Ben Smida, sofma, John Harbin, Keith Allan, Amar Bizwer, Najib Lakhdhar, Bouabdellah, Jamal McMillan, Atay Rabby Chisty, IVAN KOBETS, MINERAL, maddis jones, Philipp Muller (1).
When you own a highly fabricated brand, it is tempting, for economic reasons and dispute management, to target as many domain names as possible in a UDRP complaint, in order to get a response to the various infringements encountered with a single decision. However, it is important to remain vigilant about the strength of the link between the designated domain names and to demonstrate it precisely so that the consolidation is accepted.
Thus, in a decision of October 27, 2022, the UDRP complaint filed by Fenix International Limited (“Fenix”) seeking to be awarded 14 domain names that are believed to be imitating its ONLY FANS brand was rejected.
The complainant owns the domain name <onlyfans.com> and several “ONLYFANS” trademarks registered in 2019, including European Union and United Kingdom trademarks.
The www.onlyfans.com website has experienced rapid growth in recent years: with more than 180 million registered users, it now ranks 177th in the Alexa Top ranking the most popular websites in the world. It is a platform for posting and subscribing to audiovisual content. Erotic and pornographic content proves successful there.
The disputed domain names, registered after Fenix’s trademarks, have some apparent links to the platform, such as <onlyfans-leaked.com> or <celebrityonlyfans.com>, whilst others reproduce only parts of the brand: the initials “O” and “F”, the term “ONLY” or the term “FAN”.
These domain names point to websites offering services similar to those of the complainant, namely adult video content. The UDRP procedure states that when several disputed domain names appear to have a link, they can be studied through a single procedure.
In order for the acceptance of a complaint targeting multiple defendants, it must be proven that the domain names are subject to common control, whether it be a single person or a group of individuals acting together , and that consolidation serves the interests of each parties, leading to a fair and equitable decision. It is the complainant’s responsibility to provide proof on the issue of common control of the disputed domain names. Therefore, in order to demonstrate this link, the complainant has put forward numerous arguments.
The complainant bases its request for consolidation on several arguments: the disputed domain names direct to websites offering pirated content from its www.onlyfans.com website; the various sites have a general design strongly similar to its official site, whether in terms of header, font, or logos used; they offer the same services and prices; the names are registered through three registration offices; and they have a common structure: some are made up of a generic terms followed by the “ONLY” part of the earlier brand, whilst others interchange these elements.
In addition, the complainant alleges that, given the addresses indicated during the registration of some of the disputed domain names, located in Tunisia, the probability of common control was all the more conceivable. The complainant further states that lots of the contact information was incorrect during the registration of the domain names. However, the expert notes that the mere provision of incorrect information does not prove common control, particularly given the regularity of such occurrences.
Lastly, the complainant mentions that one of the defendants had already been the subject of a UDRP complaint, for which Fenix had been granted its consolidation request.
Two defendants responded to the complainant’s arguments. The holder of the domain name <baddiesonly.tv> explained that the websites have a similar appearance because they are based on a “KYS” script, which provides a typical layout that will be very similar from one site to another. They explained that their domain name was reserved through an agency, so they did not choose the registration office and that nothing connects them to the other domain names, such as the registrant information or the registration date.
A second defendant, holder of the name <hornyfanz.com>, also explains that they have no connection with the holders of the other names targeted by the complaint.
To ground its decision, the expert notes that the complainant has not proven the common control of the different domain names, even though it was their responsibility to substantiate their allegations.
Essentially, the presented annexes only showed websites with adult entertainment content. Therefore, according to the expert, they were not enough to prove that the disputed domain names were linked. In fact, looking at the sites in detail, the expert noticed that they all more or less differ from each other. The expert explains that even if some of the sites could be considered to be very close and therefore under common control, it does not prove that the other invoked names are linked to this group of names.
Moreover, the expert notes that the complainant contradicts themselves by stating at one point that three registration offices are involved when in the amended complaint, they mention five. In any case, this does not show common control between the names.
Furthermore, the combination of the term “ONLY” with another generic term cannot demonstrate common control of the domain names since “ONLY” is also a generic term. To this point, one could argue that the complainant could have argued the fame of their “ONLY FANS” brand in connection with erotic and pornographic content, to argue that the terms “ONLY,” “FANS,” and the initials “OF” can evoke their brand.
Finally, the expert notes that the names were registered over a two-year period and that the defendants all have different email addresses.
All these reasons led the expert to simply reject the complainant’s complaint, while reminding them that the admission of a complaint against multiple defendants is not automatic. The constitution of such a complaint significantly increases the burden of proof on the complainant, which must be taken seriously. In this case, Fenis’ analysis indeed seemed fanciful.