Modernatx, Inc. v Derek Chaves

WIPO Case No. D2022-3310

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Modernatx, Inc. v. Derek Chaves

Case No. D2022-3310

1. The Parties

The Complainant is Modernatx, Inc., United States of America (the “United States”), represented by SILKA

AB, Sweden.

The Respondent is Derek Chaves, United States.

2. The Domain Name and Registrar

The disputed domain name <modernaboostershot.com> 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 September 5, 2022. On September 6, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 6, 2022, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that 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 of the Complaint, and the proceedings commenced on September 7, 2022. In accordance with the Rules, paragraph 5, the due date for Response was September 27, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 3, 2022.

The Center appointed Dennis A. Foster as the sole panelist in this matter on October 6, 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.

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4. Factual Background

The Complainant, a well-known company based in the United States, develops and markets various medical products, including a COVID-19 vaccine, throughout the world. The Complainant conducts its operations under its MODERNA trademark, which has been registered with trademark authorities globally, including with the United States Trademark and Patent Office (“USPTO”) (e.g., Registration No. 4569803; registered on December 23, 2014).

The Respondent owns the disputed domain name, <modernaboostershot.com>, which was registered on third party websites.

5. Parties’ Contentions

A. Complainant

- The Complainant is a United States company that develops and markets medicines based on messenger DNA. These medicines include the Complainant’s COVID-19 vaccine, of which more than 800 billion doses were shipped worldwide in 2021. In that year, the Complainant’s total sales were approximately USD 18.5

billion.

- The Complainant operates under its world-famous MODERNA trademark, which has been registered
globally, including with the USPTO.

- The disputed domain name is confusingly similar to the Complainant’s MODERNA trademark. Fully irrelevant in this comparison.
incorporated within the disputed domain name, the mark is the first and dominant feature of the disputed
domain name. The generic terms, “booster” and “shot”, which are clearly related to the Complainant’s

vaccine products, create no meaningful distinction between the disputed domain name and the

- The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not name, and has not been commonly known by that name. The disputed domain name is used in connection with a website that suggests a false affiliation with the Complainant and that offers PPC links to third party websites, all of which fails to comport with a legitimate or fair use of the disputed domain name.

a licensee of the Complainant and has received no consent or permission from the Complainant to use the
- The Respondent registered and is using the disputed domain name in bad faith. The Respondent was
clearly aware of the Complainant’s world-famous MODERNA trademark when registering the disputed
domain name. The Respondent’s use of the disputed domain name for a website that contains PPC links,
undoubtedly intended for the Respondent’s commercial gain, makes it clear that the disputed domain name

was registered and is being used in bad faith.

B. Respondent

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

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6. Discussion and Findings

Pursuant to Policy paragraphs 4(a)(i) - (iii), the Panel may find for the Complainant and grant it a transfer of the disputed domain name if the Complainant demonstrates that:

- The disputed domain name is identical or confusingly similar to a trademark or service mark in which
the Complainant has rights; and

- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

- The disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant’s registration of the MODERNA trademark with the USPTO establishes
the Complainant’s rights in that mark for the purposes of Policy paragraph 4(a)(i). See LO 337 IP Holding,
LLC v. John Williams, J Entertainment ATL / John Williams, J, WIPO Case No. D2019-2339 (“The Panel
concludes that Complainant has rights in the mark WORLD STAR HIP HOP through registration with the

USPTO.”); and DIRECTV, LLC v. Net Manager, Xwings Domains, WIPO Case No. D2015-0551 (“The Panel

accepts that a valid USPTO registration for a mark ‛establish[es] that the Complainant has sufficient rights in

that mark for the purpose of paragraph 4(a)(i) of the Policy.”).

Because the disputed domain name adds the terms “booster” and “shot” to the Complainant’s MODERNA trademark, the Panel concludes that the two are not identical under the Policy. However, the Panel believes that the disputed domain name should be considered confusingly similar to the mark, since the MODERNA trademark remains recognizable despite the additional terms. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8. The Panel also notes that the added gTLD, “.com”, does not affect the determination of confusing similarity as such additions are required of all domain names. See Pentair Flow Service AG v. Michael Evingham, WIPO Case No. D2017-0966 (finding <pentairboosterpumps.com>, among other disputed domain names, to be confusingly similar to the PENTAIR mark); and Fendi Srl v. Ren Fu Rong(任芙蓉), WIPO Case No. D2021-2115 (“A gTLD suffix is normally disregarded in the comparison between a disputed domain name and a trademark for the purposes of the first element of the Policy.”).

Accordingly, the Panel finds that the Complainant has demonstrated that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Though the Policy places on a complainant the burden of proving that a respondent has no rights or legitimate interests in a disputed domain name, the consensus of UDRP decisions is that a complainant needs to present a mere prima facie case that the respondent does not have those rights or legitimate interests before the burden of production shifts to that respondent to produce evidence of such rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1; and Colbeck Capital Management, LLC v. Contact Privacy Inc. Customer 1245253802 / Name Redacted, WIPO Case No. D2019-2796 (“Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name.”).

The Complainant has demonstrated to the Panel that the disputed domain name is confusingly similar to the MODERNA trademark, and has asserted clearly that the Respondent was not granted consent or permission to use that mark. As a result, the Complainant has met the standard necessary for a prima facie case that

the Respondent has no rights or legitimate interests in the disputed domain name.

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Since the Respondent has filed no Response, the Panel will determine whether a plausible rebuttal to the
Complainant’s prima facie case exists based on all reasonable information found in the Complaint.
The Panel will draw such inferences as may be appropriate. See, WIPO Overview 3.0, section 2.1
(“The panel may draw inferences from the absence of a response as it considers appropriate, but will weigh
all available evidence irrespective of whether a response is filed.”).

The Complaint provides the Panel with direct evidence that the disputed domain name is used to host a website that offers no goods or services, but instead presents PPC links to third party websites. As has been found by prior Policy panels, this sort of usage does not constitute “a bona fide offering of goods and

Merck Sharp & Dohme Corp. v. Domain Administrator, B.V. v. J- B-, Limestar Inc., WIPO Case No. D2016-0344 (“...prior panels deciding under the Policy have held that pay-per-click [‘PPC’] parking pages built around a trademark [...] do not constitute a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy...”).
services” under Policy paragraph 4(c)(i). See

Moreover, the Panel finds it improbable that the Respondent is commonly known as <modernaboostershot.com>, meaning that Policy paragraph 4(c)(ii) is inapplicable as well. Also, the Respondent’s aforementioned PPC linkage does not constitute a “legitimate noncommercial or fair use” of the disputed domain name per Policy paragraph 4(c)(iii). Moreover, considering the composition of the disputed domain name, which combines the MODERNA mark with the terms “booster” and “shot” descriptive of the Complainant’s COVID-19 vaccine, the disputed domain name is such to carry a risk of implied affiliation to the Complainant, contrary to the fact, which cannot constitute fair use. See section 2.5.1 of the WIPO Overview 3.0.

Therefore, not finding pertinent contradictory evidence in the Complaint or in any other portion of the record in this case, the Panel concludes that the Complainant’s prima facie case prevails. Accordingly, the Panel finds that the Complainant has demonstrated that the Respondent has no rights or legitimate interests in the

disputed domain name.

C. Registered and Used in Bad Faith

As referred to above, the Panel has determined that the disputed domain name is attached to a website
that presents PPC links to third party websites. Therefore, as the disputed domain name has been found
to be confusingly similar to the Complainant’s trademark, the Panel believes that the Respondent is
intentionally attempting to attract Internet users, and derive commercial gain thereby, due to likely
confusion between the disputed domain name and the Complainant’s mark as to the source, sponsorship,
affiliation or endorsement of the Respondent’s attached website in bad faith per paragraph 4(b)(iv) of the
Policy. See Kathleen Josey v. Liang Zhang, WIPO Case No. D2020-2313; and Fontem Holdings 4, B.V. v.

J- B-, Limestar Inc., WIPO Case No. D2016-0344 (“...the Respondent’s use of the Domain Name to resolve

to a parking page containing sponsored links constitutes bad faith [...] in accordance with paragraph 4(b)(iv)

of the Policy.”).

The Panel also notes that the Complainant and its MODERNA trademark are famous throughout the world, especially in light of the COVID-19 pandemic. That status by itself suggests to the Panel that any entity not affiliated with the Complainant that registers and uses a domain name that is confusingly similar to that

D2022-2125 (“The registration of a domain name, confusingly similar to a third party’s well-known trademark, without authorization, or rights or legitimate interests in the domain name, can create a presumption of registration in bad faith by itself.”); Modernatx, Inc. v. Whois Privacy, Private by Design, LLC / hggfdd bchgugugh, WIPO Case No. D2022-2111 (“The Complainant’s MODERNA-formative marks are very well-known in the United States and globally, due to the COVID-19 pandemic and the Complainant’s successful vaccine.”); and Modernatx, Inc. v. YangZhiChao, WIPO Case No. D2022-1552. Furthermore, particularly given the construction of the disputed domain name, combining the terms “booster” and “shot”
trademark has done so in bad faith. Several other UDRP panels have reached the same conclusion with No.
respect to bad faith registration and use of disputed domain names relative to the Complainant”s mark.

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with the Complainant’s mark, the Respondent was evidently aware of and intended to target the Complainant
when registering the disputed domain name.

Accordingly, the Panel finds that the Complainant has demonstrated that the disputed domain name was registered and is being used in bad faith.

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, <modernaboostershot.com>, be transferred to the Complainant.

/Dennis A. Foster/
Dennis A. Foster
Sole Panelist
Date: October 20, 2022