Midjourney Inc. v Bui Xuan Thanh

WIPO Case No. DIO2025-0027

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Midjourney Inc. v. Bui Xuan Thanh

Case No. DIO2025-0027

1. The Parties

The Complainant is Midjourney Inc., United States of America (“United States”), represented Cooley LLP,

United States.

The Respondent is Bui Xuan Thanh, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <journeyfree.io> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2025. On July 29, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 7, 2025, the Registrar transmitted by email to the Center its verification response disclosing that the Respondent is listed as the registrant and providing the contact details. On August 7, 2025, the Center invited the Complainant to amend the Complaint to add the identified registrant as the Respondent, and on the same day the Respondent sent an email communication to the Center. On August 14, 2025, pursuant to the Rules (as defined below), paragraph 17, the Center invited the Complainant to submit a request for suspension by August 19, 2025. On August 20, 2025, considering that no request for suspension was received, the Center informed the parties that it will continue the proceedings.

The Center verified that the Complaint satisfied the formal requirements of the .IO Domain Name Dispute the WIPO Supplemental Rules for .IO Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on August 28, 2025. In accordance with the Rules, paragraph
5, the due date for Response was September 17, 2025. The Response did not file a formal Response.

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The Center appointed Andrea Mondini as the sole panelist in this matter on October 1, 2025. 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 was founded in 2022, is headquartered in San Francisco, United States, and provides generative artificial intelligence (“AI”) services on its MIDJOURNEY platform enabling users to generate images from text and images prompts. This platform is accessed via the third-party service Discord and hast

today over a million members online at any given time.

The Complainant owns numerous trademark registrations in several jurisdictions for its MIDJOURNEY trademark, including:

TRADEMARK JURISDICTION REGISTRATION INTERNATIONAL

REGISTRATION DATE

NUMBER CLASSES

MIDJOURNEY	United States	7358148	April 16, 2024	41, 42, 45
MIDJOURNEY	European Union	018850366	September 7, 2023	9, 16, 25, 35, 41, 42, 45

The Complainant holds the domain name <midjourney.com> which hosts its main website.

Because the Respondent did not file a formal Response, not much is known about the Respondent.

The disputed domain name was registered on December 16, 2024.

As of May 2025, the disputed domain name resolved to an active website featuring a generative AI tool featuring the MIDJOURNEY trademark and purporting to offer a MIDJOURNEY AI art generator for free. At the time of rendering this decision, the disputed domain name is inactive.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends as follows:

The trademark MIDJOURNEY has been extensively used to identify the Complainant and its services. The disputed domain name is confusingly similar to the MIDJOURNEY trademark in which the Complainant has rights, because it incorporates a substantial portion of this trademark. The absence of the portion “mid” of

the Complainant’s trademark in the disputed domain name and the addition of the word “free” do not
differentiate it from the Complainant’s mark. Although contents of websites are generally irrelevant to a
panel’s determination of likelihood of confusion, because the Respondent redirected the disputed domain
name to a website purporting to offer a MIDJOURNEY AI art generator for free, the Respondent selected the
disputed domain name to deceive users into believing that it is a genuine offer of the Complainant, and
hence the disputed domain name is confusingly similar to the Complainant’s trademark.

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The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has not been authorized by the Complainant to use this trademark and is not commonly known by the disputed domain name. The Respondent’s use of the disputed domain name for the purpose of profiteering off of the MIDJOURNEY mark, including by purporting to offer its users access to the Complainant’s MIDJOURNEY services, intentionally trades on the fame and reputation of the Complainant’s trademark and should not be regarded as bona fide use.

The disputed domain name was registered and used in bad faith because it is obvious that the Respondent had knowledge of both the Complainant and its well-known trademark MIDJOURNEY at the time it registered the disputed domain name, and could not have chosen or subsequently used the disputed domain name for any reason other than to confuse Internet users to attract them to a website with a name which is the same as the Complainant’ trademark.

B. Respondent

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

On August 7, 2027, the Respondent sent an email to the Center stating: “I have deleted the domain mentioned above. It is currently inactive and no longer owned by me.”

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, a complainant must establish each of the following elements:

(i) the disputed domain name is identical or confusingly similar to the trademark or service mark in which the

complainant has rights;

(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 is being used in bad faith.

Although the Respondent stated in its email of August 7, 2025, that he deactivated and deleted the disputed domain name, as of today the disputed domain name has only been deactivated, but it is still registered.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The disputed domain name incorporates a substantial portion of the Complainant’s MIDJOURNEY trademark, i.e., the element “journey”. In the present case, the omission of the element “mid” of the Complainant’s trademark and the addition of the word “free” do not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. Although contents of websites are generally irrelevant to a panel’s determination of confusing similarity, they may in some instances confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name. WIPO Overview 3.0, section 1.15. Given that the disputed domain name resolves to a website prominently featuring the MIDJOURNEY trademark and purporting to offer a free trial of the services provided by the Complainant, the Panel finds that in the present case the

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Respondent has clearly targeted the Complaint’s trademark and the disputed domain name is likely to confuse Internet users who may mistakenly believe that the disputed domain name originates from the Complainant, when in fact it does not.

The addition of the country code Top-Level Domain (“ccTLD”) “.io” in the disputed domain name is a standard registration requirement and as such may be disregarded under the confusing similarity test under the Policy, paragraph 4(a)(i). WIPO Overview 3.0, section 1.11.1.

The Panel thus finds that the disputed domain name is confusingly similar to the Complainant’s trademark.

The first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that for a complainant to prove that a respondent lacks rights or legitimate interests in a domain name may result in the difficult 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 (although the burden of proof always remains on the complainant). If the respondent fails to come
forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. On the contrary, the Respondent’s message to the Center of August 7, 2025, stating that he deactivated and deleted the disputed domain name, implies that the Respondent does not assert any rights or legitimate interests in the disputed domain name.

Based on the available record, the Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

In the view of the Panel, noting that the Complainant’s trademark predates the registration of the disputed domain name and considering that the disputed domain name resolved to a website featuring the Complainant’s trademark and referring to its services, it is inconceivable that the Respondent could have registered the disputed domain name without knowledge of the Complainant’s well-known trademark. In the circumstances of this case, this is evidence of registration in bad faith.

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Although the content of the website associated with the disputed domain name has been deactivated after the filing of the Complaint, the Complainant has shown that the disputed domain name previously resolved to a website purporting to offer the Complainant’s Midjourney AI Image Generator for a free trial. The impression given by the website previously posted under the disputed domain name would cause Internet users to believe that the Respondent is somehow associated with the Complainant when, in fact, he is not. This use is clearly misleading and disruptive to the Complainant’s services, which supports a finding of bad faith in these circumstances.

Based on the available record, the Panel finds that the Complainant has established the third element of the

Policy with regard to the disputed domain name.

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 name <journeyfree.io> be transferred to the Complainant.

/Andrea Mondini/
Andrea Mondini
Sole Panelist
Date: October 7, 2025