DECISION
Midjourney, Inc. v. Midjourney Group / The Midjourney AI
Claim Number: FA2406002103820
PARTIES
Complainant is Midjourney, Inc. ("Complainant"), represented by Judd Lauter of Cooley LLP, California, USA. Respondent is Midjourney Group / The Midjourney AI ("Respondent"), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <midjourneys.online>, registered with Tucows Domains Inc.
PANEL
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on June 26, 2024; Forum received payment on June 26, 2024.
On June 27, 2024, Tucows Domains Inc. confirmed by e-mail to Forum that the <midjourneys.online> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July 3, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 23, 2024, by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and, as well, to the attention of postmaster@midjourneys.online. Also on July 3, 2024, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts.
Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On July 24, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant
Complainant is an independent research laboratory that uses artificial intelligence software to enable users of its namesake platform to generate novel images from text and image prompts.
Complainant holds a registration for the service mark MIDJOURNEY, on file with the United States Patent and Trademark Office ("USPTO") as Registry No. 7,358,148, registered April 16, 2024, upon an application for registration filed September 19, 2022.
Complainant does business online at <midjourney.com>.
Respondent registered the domain name <midjourneys.online> on July 20, 2023.
Respondent gave a fake address for itself in filing for registration of the domain name.
The domain name does not resolve to an active website, but, instead, to an error page.
Respondent has made no effort to use the domain name in connection with a bona fide offering of goods or services.
Respondent has not been commonly known by the domain name.
Respondent is not endorsed by or in any way affiliated with Complainant.
Complainant has not authorized Respondent to use its MIDJOURNEY mark either in a domain name or otherwise.
Respondent has neither any right to nor any legitimate interest in the domain name.
Respondent has registered and now uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
(1) the domain name registered by Respondent is identical or confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the domain name was registered and is being used by Respondent in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
Identical and/or Confusingly Similar
By reason of its registration of the MIDJOURNEY service mark with a national trademark authority, the USPTO, Complainant has established that it has rights in that mark sufficient to satisfy the requirement of Policy ¶ 4(a)(i) that it demonstrate standing to pursue its claim against Respondent in this proceeding. See, for example, Liberty Global Logistics, LLC v. damilola emmanuel / tovary svcs. Ltd., FA 1738536 (Forum August 4, 2017):
Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.
The record reflects that Respondent registered the challenged domain name <midjourneys.online> on July 20, 2023, while Complainant was granted registration of its MIDJOURNEY mark later, on April 16, 2024. This gives rise to an implication that Respondent may have rights in the domain name senior in time to Complainant's rights in its mark. However, there is a long-standing consensus among UDRP panelists that a UDRP complainant's rights in a mark relate back to the date of filing of its application for registration, which in this case was September 19, 2022, a date prior to the effectiveness of Respondent's domain name registration. Complainant thus has temporal seniority of rights in its mark vis-à-vis any that might be claimed by Respondent in its domain name. See, for example, Appian Corp. v. Wellman Yu, FA1774926 (Forum April 9, 2018):
Complainant claims rights in the … mark based upon its registration with the United States Patent and Trademark Office ("USPTO") (... Reg. No. 4,224,718, filed Jan. 19, 2012, registered on Oct. 16, 2012). Registration with a governmental trademark agency, such as the USPTO, is sufficient to prove Policy ¶4(a)(i) rights in a mark, and such rights date back to the filing date of the mark. See … ADP, LLC v. Dennis Shifrin / Streamline, FA 1732114 (Forum June 13, 2017) (holding that "the relevant date for Complainant's mark is the [mark registration] filing date.").
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent's <midjourneys.online> domain name is confusingly similar to Complainant's MIDJOURNEY service mark. The domain name incorporates the mark in its entirety, with only the addition of the letter "s," which merely transforms the mark from the singular to the plural, plus the generic Top Level Domain ("gTLD") ".online." These alterations of the mark, made in creating the domain name, do not permit it to escape the realm of confusing similarity under the standards of the Policy. See, for example, Transamerican Auto Parts Company, LLC v. TireDiscounter.com, FA 0778966 (Forum, October 30, 2006):
[I]t is well-settled under the Policy that minor changes to a trademark, such as making the singular plural, will still lead to a finding of confusing similarity. See Nat'l Geographic Soc'y v. Stoneybrook Inv., FA 96263 (Forum Jan. 11, 2001) (where the Panel found the … domain name <nationalgeographics.com> … confusingly similar to the trademark NATIONAL GEOGRAPHIC).
See also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
Rights or Legitimate Interests
Policy ¶ 4(a)(ii) requires that Complainant make a prima facie showing that Respondent has neither rights to nor legitimate interests in the domain name <midjourneys.online>, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum, August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent's failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See, for example, Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent's failure to respond to a UDRP complaint allows a presumption that a complainant's allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the contested <midjourneys.online> domain name, and that Complainant has not authorized Respondent to use the MIDJOURNEY mark either in a domain name or otherwise. Moreover, although pertinent WHOIS information identifies the registrant of the domain name as "Midjourney Group / The Midjourney AI," there is nothing in the evidence accompanying the Complaint suggesting that Respondent has become commonly known by either of those names. It is important in this connection that, although afforded an opportunity to do so, Respondent has offered no evidence which might support a finding that it has become commonly known by the challenged domain name. And, for its part, the evidence available to the Panel suggests that Respondent, in an effort to wrap itself in an air of legitimacy to give cover to its registration of the domain name, adopted a pair of rough equivalents of Complainant's corporate name immediately following Complainant's filing of an application for the registration of its mark with the USPTO in the fall of 2022. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii).
We next observe that Complainant asserts, without objection from Respondent, that Respondent has made no effort to use the disputed domain name in connection with a bona fide offering of goods or services, but rather that the domain name resolves not to an active website, but, instead, to an error page. Absent any evidence from Respondent which might support a conclusion that it has made even some demonstrable preparations for the use of the domain name in support of some legitimate undertaking, we must conclude that its passive holding of the domain name is done neither in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in it as provided in those subsections of the Policy. See, for example, Yahoo! Inc. v. Domain Web, FA0128671 (Forum, December 31, 2002) (ordering transfer of an inactive and undeveloped domain name to a UDRP Complainant). To the same effect, see also Staples, Inc. v. Conrad, D2003-0713 (WIPO October 27, 2003) (finding that a respondent lacked rights to or legitimate interests in a domain name containing the mark of another that resolved to a webpage lacking any substantive content).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
We are persuaded by the evidence submitted in support of the Complaint that Respondent knew of Complainant and its rights in the MIDJOURNEY mark when it registered the <midjourneys.online> domain name. This, together with Respondent's undenied provision of false contact information when it registered the domain name, demonstrates that the domain name was registered by Respondent in bad faith. See, for example, Immigration Equality v. Brent, FA 1103571 (Forum, January 11, 2008):
That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark[,] is sufficient to prove bad faith registration … under Policy ¶ 4(a)(iii).
We are likewise satisfied that Respondent has made no effort to offer evidence of any legitimate use to which the <midjourneys.online> domain name might be put, if ever it were to be engaged in active use, presumably because Respondent knows that it can advance no plausible legitimate use for the domain name. This inevitably leads to the conclusion that Respondent now uses the domain name in bad faith. See, for example, Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000), citing a UDRP respondent's failure to supply evidence of even a contemplated good faith use of a contested domain name in response to a mark holder's complaint, and its giving of false contact information when registering that domain name, in finding that:
[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.
See also Ferrari S.p.A. v. Joohee, D2003-0882 (WIPO December 18, 2003), finding bad faith registration and use of a domain name where:
The Panel finds it implausible that Respondent was unaware of Complainant's trademark… [and] Respondent has provided no evidence or suggestion of a possible legitimate use [for its domain name]…. Thus, …, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate,….
The Panel thus finds that Complainant has met its obligations of proof under ¶ 4(a)(iii).
DECISION
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the domain name <midjourneys.online> be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 29, 2024
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page