Dynadot / 石磊 (Lei Shi)

WIPO Case No. D2022-2124

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Moderna, Inc. and ModernaTX, Inc. v. Super Privacy Service LTD c/o

Dynadot / 石磊 (Lei Shi)

Case No. D2022-2124

1. The Parties

The Complainants are Moderna, Inc. and ModernaTX, Inc. (collectively “the Complainant”), United States of

America (“United States”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC,

United States.

The Respondent is Super Privacy Service LTD c/o Dynadot, United States / 石磊 (Lei Shi), China.

2. The Domain Names and Registrars

The disputed domain names <modernarewardssurvey.com> and <modernatotalsurvey.com> are registered with Cloud Yuqu LLC; and the disputed domain names <modernatotalrewardsurvey.com> and

<modernatotarewardssurvey.com> are registered with Dynadot, LLC (collectively “the Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June

11, 2022, with regards the disputed domain names <modernarewardssurvey.com> and
<modernatotalsurvey.com>. On June 13, 2022, the Center transmitted by email to the Registrar a request
for registrar verification in connection with the disputed domain names. On June 15, 2022, the Registrar
transmitted by email to the Center its verification response disclosing registrant and contact information for
the disputed domain names which differed from the named Respondent and contact information in the
Complaint. The Center sent an email communication to the Complainant on June 15, 2022, providing the
registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an
amendment to the Complaint. On June 16, 2022, the Center received an email communication from the
Complainant, in which the Complainant requested the addition of the disputed domain names
<modernatotalrewardsurvey.com> and <modernatotarewardssurvey.com> to this proceeding. The

Complainant filed the first amendment to the Complaint in English on June 17, 2022. In response to the

Center’s request, the Complainant filed the second amendment to the Complaint in English on June 21,

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On June 15, 2022, the Center sent an email in English and Chinese to the Parties regarding the language of
the proceeding. The Complainant requested that English be the language of the proceeding on June 17,

2022. The Respondent did not comment on the language of the proceeding.

The Center verified that the Complaint together with the amendments 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 in English
and Chinese of the Complaint, and the proceedings commenced on June 22, 2022. In accordance with the

Rules, paragraph 5, the due date for Response was July 12, 2022. The Respondent did not submit any

response. Accordingly, the Center notified the Respondent’s default on July 13, 2022.

The Center appointed Douglas Clark as the sole panelist in this matter on July 21, 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 Complainant is a public company founded in 2010 and is the developer of the MODERNA COVID-19

vaccine. More than 70 countries have approved the Complainant’s vaccine. The Complainant is the

registrant of the domain name <modernatx.com>, and also uses the domain name
<modernatotalrewardssurvey.com> in connection with communications with its employees.

The Complainant owns several trade mark registrations for MODERNA in the United States, including the following:

Trade Mark	Registration Number	Registration Date
MODERNA	4,675,783	January 20, 2015
MODERNA	4,811,834	September 15, 2015
MODERNA MESSENGER	4,675,775	January 20, 2015
THERAPEUTICS
MODERNA UNIVERSITY	5,311,631	October 17, 2017
MODERNA UNIVERSITY	5,311,632	October 17, 2017
MODERNA MODERNA COVID-	6,389,465	June 15, 2021
19 VACCINE

The Complainant also has a number of trade marks for MODERNA in a number of countries. These registrations includes a registration in China under registration no. 36738656 in Class 5. (This trade mark was not referred to in the case file for this Complaint, however, the Panel is aware of it because it was the

panelist in Modernatx, Inc. v. 石磊 (shi lei), WIPO Case No. D2022-1669, where the Complainant did

produce evidence of this registration).

The disputed domain names were registered on May 21, 2022, one day after the Complainant registered the
domain name <modernatotalrewardssurvey.com>. At the time of filing this complaint and at the date of this

Decision, all the disputed domain names <modernarewardssurvey.com>, <modernatotalsurvey.com> and

<modernatotalrewardsurvey.com> resolved to a webpage containing a list of pay-per-click (“PPC”) links in

English to unrelated third-party websites.

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5. Parties’ Contentions

A. Complainant

The Complainant contends that:

(a) The disputed domain names are confusingly similar to its trade mark. The use of the generic Top-Level

Domain (“gTLD”) “.com” is viewed as a standard registration requirement and as such is disregarded under
the first element confusing similarity test. The addition of generic or descriptive words “rewards”, “total”, and

“survey” do not prevent a finding of confusing similarity.

(b) The Respondent has no rights or legitimate interests in the disputed domain names. The Respondent is

not affiliated with the Complainant in any way and the Complainant has never granted any authorization or

license to use the Complainant’s trade mark. The Respondent is not commonly known by the disputed

domain names, and has not made a bona fide offering of goods or services or a legitimate noncommercial or

fair use of the disputed domain names.

(c) The disputed domain names were registered and are being used in bad faith. The Respondent has
registered disputed domain names that incorporate the MODERNA trade mark. The Respondent is using

the disputed domain names to attract Internet users for commercial gain, creating a likelihood of confusion

with the Complainant’s trade mark. The Respondent is a serial cybersquatter who has registered the domain

names incorporating the trade marks of others and being the unsuccessful respondent to a number of

domain name complaints in 2021 and 2022.

The Complainant requests the transfer of the disputed domain names.

B. Respondent

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

6. Discussion and Findings

6.1 Preliminary Issue

According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

In this case, the language of the Registration Agreement for the disputed domain names <modernarewardssurvey.com> and <modernatotalsurvey.com> is Chinese. The language of the Registration Agreement for the other disputed domain names is English. There is no agreement between the Complainant and the Respondent regarding the language of the proceeding. The Respondent did not respond as to the language of the proceeding. The Complainant has filed the Complaint in English and has requested that English be the language for the proceeding under the following grounds:

a) the disputed domain names contain English words;
b) the websites the disputed domain names resolve to are in the English language;
c) previous proceedings involving the Respondent have been conducted in English; and
d) in order to proceed in Chinese, the Complainant would have had to retain specialised translation services
that would cause an unnecessary burden to the Complainant and delay the proceeding.

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In accordance with paragraph 11(a) of the Rules and taking into consideration paragraph 10(b) and (c) of the Rules, the Panel hereby determines that the language of the proceeding shall be in English after considering the following circumstances:

- the Center has notified the Respondent of the proceeding in both English and Chinese;

- the Respondent has not commented on the language of the proceeding;

- the content on the Respondent’s websites is entirely in English;

- the Registration Agreement for two of the disputed domain names is in English; and

- an order for the translation of the Complaint and other supporting documents will result in significant

expenses for the Complainant and a delay in the proceeding.

Further, this Panel decided in Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, that

a respondent’s failure to respond to a preliminary determination by the Center as to the language of the
proceeding “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the

language of the Complaint”.

6.2 Substantive Issues

The Complainant must satisfy all three elements of paragraph 4(a) of the Policy in order to succeed in its action:

(i) the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has

rights to;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain names <modernarewardssurvey.com>,

<modernatotalrewardsurvey.com>, <modernatotalsurvey.com>, and <modernatotarewardssurvey.com> are

confusingly similar to the Complainant’s trade mark. The disputed domain names incorporate the
MODERNA trade mark in full along with the words “rewards”, “total”, and “survey” in various combinations.

They are then accompanied with the gTLD “.com”. The addition of the generic or descriptive words does not

prevent a finding of confusing similarity. The gTLD is generally disregarded when considering the first

element. (See section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions,

Third Edition (“WIPO Overview 3.0”))

The Complainant has therefore satisfied the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Complainant asserts that the Respondent has no business with and is in no way affiliated with the

Complainant. The Respondent is not authorized nor licensed to use the Complainant’s MODERNA trade

mark or to apply for registration of the disputed domain names. There is no evidence that the Respondent is

commonly known by the name “Moderna”.

There is also no other evidence that the Respondent has used or is planning to use the disputed domain names for a bona fide offering of goods or services. In addition, the Respondent has not responded to any

of the Complainant’s contentions.

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The Respondent has not asserted any rights or legitimate interests in relation to the disputed domain names.

Section 2.1 of the WIPO Overview 3.0 provides:

“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that

proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible

task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the

respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or
legitimate interests, the burden of production on this element shifts to the respondent to come forward with
relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to

come forward with such relevant evidence, the complainant is deemed to have satisfied the second

element.”

The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, which has not been rebutted by the Respondent. Accordingly, the Respondent has no rights or legitimate interests in regard to the disputed domain names.

C. Registered and Used in Bad Faith

Based on the evidence, the Panel has not hesitation in concluding the disputed domain names were registered and are being used in bad faith.

The disputed domain names were registered long after the Complainant has registered the MODERNA trade
mark. The disputed domain names were also registered one day after the Complainant registered its

domain name <modernatotalrewardssurvey.com>. The similarity of the disputed domain names with the

Complainant’s domain name <modernatotalrewardssurvey.com> cannot be a coincidence. The Panel is

satisfied that the Respondent was aware of the Complainant and its MODERNA trade mark when it
registered the disputed domain names. It also appears to the Panel that the Respondent has registered the
disputed domain names for commercial gain in accordance with paragraph 4(b)(iv) of the Policy by the use
of PPC sites. It also appears to the Panel that that the Respondent is a serial cybersquatter having being
the unsuccessful respondent to a number of domain disputes in the past year.

For the above reasons, the Panel finds that the disputed domain names were registered and are being used in bad faith.

The Complainant has therefore satisfied the third element under paragraph 4(a) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel
orders that the disputed domain names, <modernarewardssurvey.com>, <modernatotalrewardsurvey.com>,

<modernatotalsurvey.com>, and <modernatotarewardssurvey.com>, be transferred to the Complainant.

/Douglas Clark/

Douglas Clark

Sole Panelist
Date: August 6, 2022