Chinese Respondent to UDRP says MidjourneyAPI.xyz is generic

Quite often, Chinese respondents to UDRP filings oppose the Complainants’ well-justified claims of trademark violations.

In the case of the domain MidjourneyAPI.xyz, the Respondent (Cheng Fu) had the audacity to question the Complainant’s well-known trademark, MIDJOURNEY, used continuously since early 2022 and well prior to the registration date for the disputed domain name.

Said the Respondent:

The Domain Name includes the term “api” which is a widely recognized acronym for “Application Programming Interface”. This term clearly indicates that the disputed domain name is related to an API service, not the core image-generation services offered by Complainant since Midjourney does not offer an API service. The addition of “api” distinguishes the disputed domain name from Complainant’s trademark and reduces the likelihood of confusion.

The sole panelist disagreed:

Given the circumstances of the case, including the provided information of the use and reputation of the Complainant’s trademark MIDJOURNEY and the distinctive nature of this mark, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant’s mark. The Panel therefore finds that the disputed domain name was registered in bad faith.

The Respondent is using the disputed domain name with the intent to attract Internet users for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source, affiliation, or endorsement of the Respondent’s website to which the disputed domain name resolves.

Final decision: Grant the transfer of the domain MidjourneyAPI.xyz to the Complainant. The matching .com domain, MidjourneyAPI.com, is listed for sale on Atom and this UDRP decision will most definitely decide its fate.

Midjourney, Inc. filed a UDRP

Midjourney, Inc. v. Cheng Fu

Claim Number: FA2412002132495

PARTIES

Complainant is Midjourney, Inc. (“Complainant”), represented by Judd Lauter of Cooley LLP, US. Respondent is Cheng Fu (“Respondent”), China.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is midjourneyapi.xyz, registered with GoDaddy.com, LLC.

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.

Lars Karnøe as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on December 27, 2024; Forum received payment on December 27, 2024.

On December 31, 2024, GoDaddy.com, LLC confirmed by e-mail to Forum that the midjourneyapi.xyz domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 January 6, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 27, 2025 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@midjourneyapi.xyz. Also on January 6, 2025, 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.

A timely Response was received and determined to be complete on January 27, 2025.

On January 27, 2025, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Lars Karnøe 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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant is a Delaware corporation headquartered in San Francisco, California. Complainant is an innovative independent research laboratory that uses artificial intelligence (“AI”) software to enable users of its namesake platform to generate novel images from text and image prompts.

Complainant started a private beta of its MIDJOURNEY generative AI services in early 2022 and quickly garnered a significant user base in the tens of thousands and widespread acclaim. On June 11, 2022, an image created using Complainant’s MIDJOURNEY platform was featured on the cover of The Economist, and Complainant and the MIDJOURNEY mark were featured extensively within an article about generative AI.

Complainant subsequently launched the public beta version of the MIDJOURNEY platform in early July 2022, which is accessed via the third-party service, Discord. Complainant quickly earned widespread acclaim as a leader in generative AI, and its user base grew dramatically. As of the filing of this complaint, Complainant’s Discord server has nearly 19.5 million members, with typically well over a million members online at any given time.

Complainant’s primary website is located at www.midjourney.com, which fully incorporates the MIDJOURNEY mark.

Complainant regularly receives unsolicited press for its industry-leading generative AI tools services, including in the New York Times and Wired, among others.

Because of Complainant’s prominence in the field of generative AI, and the strong association between Complainant and software, Internet users encountering the trademark MIDJOURNEY in connection with the promotion of AI software will naturally assume that such software

originates from or is otherwise associated with Complainant.

Complainant has used the MIDJOURNEY mark continuously since early 2022 and well prior to the registration date for the disputed domain name. Thus, Complainant owns rights in the MIDJOURNEY mark that predate the registration date of the disputed domain name.

The disputed domain name consists of the MIDJOURNEY mark in combination with the generic acronym API and is therefore confusingly similar to the MIDJOURNEY mark.

Complainant has not authorized or licensed Respondent to use any of its trademarks in any way.

The evidence overwhelmingly supports the conclusion that Respondent registered and is using the disputed domain name in bad faith. The distinctive and unique qualities of the MIDJOURNEY mark, which is a coined term and was adopted by Complainant well prior to the registration of the disputed domain name, render it wholly implausible that Respondent created the disputed domain name independently.

Respondent “could not have chosen or subsequently used…its domain name[s] for any reason other than to trade on MIDJOURNEY mark and to confuse Internet users and by that means to attract them to a website with a name which is the same as that of the prominent mark. That is, in itself, evidence of bad faith.”

Furthermore, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark, the resolving website displays Complainant’s mark and refers to Complainant’s services.

Based on the foregoing, Respondent has registered and is using the Domain Name in bad faith.

B. Respondent

Complainant alleges that the Domain Name is confusingly similar to its MIDJOURNEY trademark. The Respondent disagree for the following reasons.

The Domain Name includes the term “api” which is a widely recognized acronym for “Application Programming Interface”. This term clearly indicates that the disputed domain name is related to an API service, not the core image-generation services offered by Complainant since Midjourney does not offer an API service. The addition of “api” distinguishes the disputed domain name from Complainant’s trademark and reduces the likelihood of confusion.

The Respondent registered the disputed domain name for use as a personal developer sandbox. It was never intended to compete with or harm Complainant’s business. The disputed domain name is now solely for my personal, non-commercial use.

Complainant alleges that the disputed domain name was registered and used in bad faith. The Respondent instructed GoAPI to cease using the disputed domain name, and they have complied. The disputed domain name is no longer associated with GoAPI’s services and will only be for Respondent’s personal development use in the future.

FINDINGS

The MIDJOURNEY Mark identifies Complainant’s well-known, innovative, and industry leading generative AI platform. The MIDJOURNEY Mark is inherently distinctive, recognized among the consuming public, and subject to common law protection in the United States as a result of Complainant’s exclusive use of the MIDJOURNEY Mark, the regular publication of unsolicited stories in the media, and the large, enthusiastic, and loyal userbase that the MIDJOURNEY platform enjoys. The MIDJOURNEY Mark thus symbolizes and embodies the substantial goodwill associated with Complainant and is of substantial value to Complainant.

Complainant owns numerous trademark filings for the trademark MIDJOURNEY in connection with software and other goods/services.

Respondent registered the disputed domain name on June 8, 2023, well after Complainant established rights in its MIDJOURNEY Mark.

The website associated with the Domain Name was registered and is being used to support an unauthorized API for Complainant’s generative AI services in violation of Complainant’s trademark rights.

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.

Identical and/or Confusingly Similar

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

This is a case of adding generic terms – in this case “api”, to a trademark and in respect of the well-established practice that the specific top level of a domain name such as “.xyz” does not affect the disputed domain name for the purpose of determining whether it is identical or confusingly similar. It is found that the disputed domain name is confusingly similar to Complainant’s trademark MIDJOURNEY.

Rights or Legitimate Interests

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

Registration and Use in Bad Faith

Given the circumstances of the case, including the provided information of the use and reputation of the Complainant’s trademark MIDJOURNEY and the distinctive nature of this mark, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant’s mark.

The Panel therefore finds that the disputed domain name was registered in bad faith.

The Respondent is using the disputed domain name with the intent to attract Internet users for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source, affiliation, or endorsement of the Respondent’s website to which the disputed domain name resolves. Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

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 midjourneyapi.xyz domain name be TRANSFERRED from Respondent to Complainant.

Lars Karnøe, Panelist

Dated: February 10, 2025

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