Midjourney is one of the most popular AI-driven platforms for digital creators. The company operates from Midjourney.com, a domain name that it acquired in the aftermarket.
MIDJOURNEY is also a trademark registered with the USPTO and for this matter, the company often files UDRPs against the registrants of domains that infringe on its mark.
One such case involved the domain names midjourney.network, midjourneyliving.net, midjourney.legal, midjourney.digital and midjourney.global.
Based on the facts of the case, the Forum panelist ordered these domains to be transferred to the Complainant.
Midjourney, Inc. v. bom / bomtrac / Gadev Dimita
Claim Number: FA2407002108403
PARTIES
Complainant is Midjourney, Inc. (“Complainant”), represented by Judd Lauter of Cooley LLP, California, USA. Respondent is bom / bomtrac / Gadev Dimita (“Respondent”), Multiple Locations.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are midjourney.network, midjourneyliving.net, midjourney.legal, midjourney.digital and midjourney.global (collectively “Domain Names”), registered with Name.com, Inc. and PDR Ltd. d/b/a PublicDomainRegistry.com.
PANEL
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Nicholas J.T. Smith as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on July 29, 2024; Forum received payment on July 29, 2024.
On July 30, 2024, Name.com, Inc. and PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to Forum that the midjourney.network, midjourneyliving.net, midjourney.legal, midjourney.digital and midjourney.global domain names are registered with Name.com, Inc. and PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. Name.com, Inc. and PDR Ltd. d/b/a PublicDomainRegistry.com have verified that Respondent is bound by the Name.com, Inc. and PDR Ltd. d/b/a PublicDomainRegistry.com registration agreements 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 August 2, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 22, 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 to postmaster@midjourney.network, postmaster@midjourneyliving.net, postmaster@midjourney.legal, postmaster@midjourney.digital and postmaster@midjourney.global. Also on August 2, 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 August 23, 2024, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith as Panelist.
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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has implicitly alleged that the entities which control the Domain Names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
The Panel considers it likely, on the balance of probabilities, that all of the registrants for the Domain Names are related because: 1) The Domain Names were registered within the same two week period and a number of the Domain Names (including those with notionally different registrants) were registered on the same day, and 2) Each of the Domain Names is presently inactive but prior to the commencement of the proceeding was used in connection with a Facebook scam where an entity representing itself as “Midjourney AI” purported to offer downloads of Complainant’s “software” from each of the Domain Names but actually facilitated the download of malware from the Domain Names. This evidence, in the Panel’s opinion, strongly suggests that the Domain Names are owned/controlled by a single Respondent; were the named Respondents unrelated, it would be unlikely that two unconnected entities would register very similar domain names on the same days and use them in connection with a single scam page on Facebook.
In light of these contentions, which none of the identified Respondents deny, the Panel concludes that, on the balance of probabilities, the Domain Names are commonly owned/controlled by a single Respondent who is using multiple aliases. Hereafter the single Respondent will be referred to as “Respondent” for this Decision.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is a United States company that uses artificial intelligence software to enable uses of its Midjourney platform, accessible at midjourney.com, to create unique images using text and image prompts. Complainant has offered these services under the MIDJOURNEY mark since its platform launched in early 2022 and has developed a significant global reputation in its mark. Complainant has rights in the MIDJOURNEY mark through its registration of the mark in various jurisdictions including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 7,358,148 registered April 16, 2024 with a date of first use of July 12, 2022). Respondent’s midjourney.network, midjourneyliving.net, midjourney.legal, midjourney.digital and midjourney.global domain names are identical or confusingly similar to Complainant’s MIDJOURNEY mark because each domain name incorporates the MIDJOURNEY mark in its entirety and adds generic top-level domain (“gTLD”) and in one case a generic term (“living”).
Respondent has no legitimate interests in the Domain Names. Respondent is not commonly known by the Domain Names and Complainant has not authorized or licensed Respondent any rights in the MIDJOURNEY mark. Additionally, Respondent does not use the Domain Names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the Domain Names are referred to by a Facebook page that purports to be associated with Complainant and offers Complainant’s MIDJOURNEY product. Consumers are encouraged to click on the links to the Domain Names on the Facebook page which facilitates the download of malware.
Respondent registered and uses the Domain Names in bad faith. Respondent registered the Domain Names in order to disrupt Complainant’s business and divert customers for commercial gain. Respondent registered the Domain Names with actual knowledge of Complainant’s rights in the MIDJOURNEY mark given the content of the Respondent’s Facebook page “Midjourney AI” where it purports to offer Complainant’s MIDJOURNEY product but actually facilitates the download of malware.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant holds trademark rights for the MIDJOURNEY mark. Each of the Domain Names is identical or confusingly similar to Complainant’s MIDJOURNEY mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Names and that Respondent registered and has used the Domain Names 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:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent’s failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Identical and/or Confusingly Similar
Complainant has rights in the MIDJOURNEY mark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO (e.g. Reg. No. 7,358,148 registered April 16, 2024). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
The Panel finds that each of the Domain Names is identical or confusingly similar to the MIDJOURNEY mark as they each incorporate the entire MIDJOURNEY mark while adding a gTLD and in one case the generic term “living”. Merely adding a gTLD to a wholly incorporated trademark does not negate identity between a domain name and a mark under Policy ¶ 4(a)(i). See Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”). Furthermore, adding a generic term and a TLD is generally insufficient to create a distinction between a complainant’s mark and a disputed domain name under Policy ¶ 4(a)(i). See MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); see also Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the MIDJOURNEY mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the statefarmforum.com domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS information of record lists “bom / bomtrac / Gadev Dimita” as the registrants of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Names in accordance with Policy ¶ 4(c)(ii).
Each of the Domain Names is presently inactive which by itself does not demonstrate rights or legitimate interests. The uncontested evidence in the Complaint is that the Respondent passes off as the Complainant (“Midjourney AI”) on a Facebook page, purporting to offer downloads of the Complainant’s “software” from websites at the Domain Names but actually offering malware or malicious software. This conduct is not a bona fide offering or a legitimate noncommercial or fair use. See Coachella Music Festival, LLC v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1785199 (Forum June 5, 2018) (“Respondent uses the coechella.com domain name to direct internet users to a website which is used to attempt to install malware on visiting devices. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
The Panel, while noting that the date the Respondent registered the Domain Names (March 19, 2024 and April 4, 2024) precedes the date at which the MIDJOURNEY mark was registered in the United States (April 16, 2024), finds that, at the time Respondent registered the Domain Name, Respondent had actual knowledge of Complainant’s use of and imminent registration of the MIDJOURNEY mark. Complainant had commenced usage of the MIDJOURNEY mark in 2022, had developed a significant global reputation in the mark and had a pending trademark application with the USPTO. Furthermore, upon registration each of the Domain Names were used in a scheme where the Respondent passed itself off as the Complainant to facilitate the download of malware. Furthermore, there is no obvious explanation, nor has one been provided, for an entity to register five domain names that contain the MIDJOURNEY mark and use them for sites apparently facilitating the download of malicious software/malware other than to take advantage of the similarity between the Domain Name and the MIDJOURNEY mark. In the absence of rights or legitimate interests of its own the Panel finds that Respondent’s registration of the Domain Name in awareness of the MIDJOURNEY mark demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Names in bad faith to create confusion with Complainant’s MIDJOURNEY Mark for commercial gain by using the confusingly similar Domain Names to deceive Internet users into installing malicious software on their computers. Use of a disputed domain name to impersonate a complainant in furtherance of a scheme to encourage malware is evidence of bad faith use per Policy ¶ 4(a)(iii). See Asbury Communities, Inc. v. Tiffany Hedges, FA 1785054 (Forum June 18, 2018) (“The Panel here finds that Respondent [installation of malware] further support the conclusion that Respondent registered and used the asburymethodistvillage.com domain name in bad faith under Policy ¶ 4(a)(iii)”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the midjourney.network, midjourneyliving.net, midjourney.legal, midjourney.digital and midjourney.global domain names be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: August 25, 2024
