Akamai Technologies, Inc. is a technology and software company that develops a software service called “EdgeWorkers” for which it applied for and registered trademarks with the USPTO.
Cloudflare is a competitor in the cloud services business; they develop a software service called “Cloudflare Workers.”
Cloudflare both registered and acquired domains that incorporate the “edgeworker” string, and in particular the domain names edgeworkers.com, edgeworkers.net, edgeworker.com, and edgeworker.net.
From the ensuing UDRP, it appears that when Respondent was developing the Cloudflare Workers service in April and May 2017, Respondent’s software developers created several working documents with titles including terms such as “Edge Worker API,” “edgeworker,” and “edge worker project.”
In July and August 2017, Respondent started the process of registering and acquiring the disputed domain names, as well as several other related domain names.
On September 13, 2017, Respondent admits that it became aware of Complainant’s registration application for the EDGEWORKERS mark. On September 18, 2017, Respondent started changing the branding of its new service from “Edge Workers” to “Cloudflare Service Workers” or “Cloudflare Workers,” because it discovered that Complainant had several products starting with “Edge.” On September 29, 2017, Respondent launched its new service under the name “Cloudflare Workers.” Respondent also acquired the cloudflareworkers.com domain name and had all internet traffic from <edgeworkers.com>, <edgeworkers.net>, and <edgeworker.com> redirected to this new domain name.
In other words, despite the domain rebranding Cloudflare kept and began forwarding these domains to their new domain name, CloudflareWorkers.com.
The dispute didn’t end well for Akamai, however. The three member panel at the Forum (NAF) came to the conclusion that Complainant has not shown that Respondent registered and has used the disputed domain names in bad faith.
Final decision: Deny the transfer of edgeworkers.com, edgeworkers.net, edgeworker.com, and edgeworker.net to the Complainant.
The domain transfer was denied.
Akamai Technologies, Inc. v. Cloudflare Hostmaster / Cloudflare, Inc.
Claim Number: FA2201001979588
PARTIES
Complainant is Akamai Technologies, Inc. (“Complainant”), represented by David H. Judson of Law Office of David H. Judson, Texas, USA. Respondent is Cloudflare Hostmaster / Cloudflare, Inc (“Respondent”), represented by Courtney R. Blackwell of BLUE WATER LAW, P.C., California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are , , , and , registered with CloudFlare, Inc.
PANEL
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
David H. Bernstein, as Chair of the Panel; Darryl C. Wilson, as Panelist; and Paul M. DeCicco, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on January 7, 2022; the Forum received payment on January 7, 2022.
On January 13, 2022, CloudFlare, Inc. confirmed by e-mail to the Forum that the , , , and domain names are registered with CloudFlare, Inc. and that Respondent is the current registrant of the names. CloudFlare, Inc. has verified that Respondent is bound by the CloudFlare, Inc. 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 18, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 11, 2022 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@edgeworkers.com, postmaster@edgeworkers.net, postmaster@edgeworker.com, postmaster@edgeworker.net. Also on January 18, 2022, 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 February 11, 2022.
On February 21, 2022, Complainant submitted an unsolicited Additional Submission.
On February 22, 2022, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed David H. Bernstein as Chair of the Panel along with Darryl C. Wilson and Paul M. DeCicco as Panelists.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: ADDITIONAL SUBMISSION
Before reaching the merits, the Panel must decide whether to consider Complainant’s unsolicited additional submission. Under Paragraph 12 of the Rules, the Panel has the sole discretion to request additional statements or documents from the Parties. Parties have no right to require the Panel to consider supplemental submissions; rather, it is within the discretion of the Panel to accept or consider unsolicited additional submissions. See Forum Supplemental Rule 7.
Generally, additional submissions are not appropriate unless they raise new issues of law or fact that were not reasonably available or foreseeable to a party at the time it filed its initial submission. See Oki Data Americas, Inc. v. ASD, Inc., Case No. D2001-0903 (WIPO Nov. 6, 2001). Allowing parties to submit additional submissions on a frequent basis would undermine the Policy’s goal of ensuring rapid review and adjudication of domain name disputes. See K1 Promotions, LLC v. Jordan Fabel / Brandon Myers, FA2006001900944 (Forum Sept. 7, 2020). Rebutting a statement made in a response is not a sufficient basis for filing an additional submission, especially where the issue was foreseeable and could have been addressed in the complaint. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., Case No. D2000-1525 (WIPO Jan. 29, 2001).
Complainant’s Additional Submission is not warranted with respect to the sections pertaining to Paragraph 4(b)–(c) of the Policy: the rights and legitimate interests element and the bad faith element. Although Respondent provided some facts of which Complainant was unaware, the Additional Submission supplies no new authority or facts on these two elements that were unavailable to Complainant when it filed the Complaint. The Additional Submission merely rehashes arguments from the Complaint and rebuts several of Respondent’s arguments. Complainant’s contention that Respondent had actual knowledge of Complainant’s application when it acquired the domain on September 16, 2017 is readily apparent to the Panel without the Additional Submission and, in any event, does not affect the Panel’s decision. The Panel has carefully reviewed the record and has determined that the record already provides all the information necessary to render an informed decision on the elements outlined in Paragraph 4(b)–(c) of the Policy. Even if the Panel were to accept these arguments in the Additional Submission, it would not change the Panel’s decision in this matter.
With respect to the element outlined in Paragraph 4(a) of the Policy, Respondent attacks the validity of Complainant’s registered mark. The Panel finds that the basis for this attack was not foreseeable, and for that reason the Panel will afford Complainant an opportunity to respond to those arguments through its Additional Submission. Although the Panel would normally grant Respondent an opportunity to reply when a Complainant is permitted to file a supplemental submission, given that the Panel is ruling in Respondent’s favor on the evidence as presented, the Panel does not see any reason to further prolong this proceeding with another submission. In any event, Respondent, who is represented by counsel, has not sought leave to file an additional submission.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is a technology and software company based in Massachusetts. On August 1, 2017, Complainant filed an intent-to-use application with the United States Patent and Trademark Office (“USPTO”) to register the trademark EDGEWORKS. That filing was publicly available on the USPTO website that same day. On October 13, 2020, the mark was registered as U.S. Reg. No. 6,175,541.
On August 3, 2017, Respondent registered the and domain names. On September 9, 2017, Respondent acquired the domain name from a third party, and on September 16, 2017, Respondent acquired the domain name from another third party.
On July 17, 2018, Respondent filed an application to register the mark CLOUDFLARE WORKERS with the USPTO. Respondent claimed September 29, 2017 as the date of first use of the mark. On May 21, 2019, that mark was registered as U.S. Reg. No. 5,755,230.
Complainant contends that its “EdgeWorkers” service is similar to Respondent’s “Cloudflare Workers” service. The EdgeWorkers service “provides its customer’s
software developers the ability to develop and implement software functionality (sometimes referred to as ‘microservices’) directly on Complainant’s hardware and software infrastructure.” The Cloudflare Workers service is a competing service that “provides a similar type of edge network-based service to its
customer’s developers.”
Complainant contends that the disputed domain names are identical or confusingly similar to Complainant’s mark. The domain names and are identical in sound, appearance, and meaning, with the exception of top-level domains. The domain names and are immaterial variants and nearly identical in sound, appearance, and meaning.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain names. Respondent registered or acquired each domain name after learning that Complainant adopted and sought to register the EDGEWORKERS mark. Respondent’s only use of the domain names is to divert internet traffic away from Complainant’s EdgeWorkers service and redirect it toward websites promoting and advertising Respondent’s competing Cloudflare Workers service. The , , and domain names automatically redirect to cloudflareworkers.com; the domain automatically redirects to edgeworker.cloudflareaccess.com. These redirections prevent internet users from reaching Complainant’s web pages or using Complainant’s EdgeWorkers service. In addition, Complainant did not authorize or consent to Respondent’s use of the EDGEWORKERS mark.
Complainant contends that Respondent is not commonly known by any of the disputed domain names. Respondent primarily uses the CLOUDFLARE WORKERS mark to promote its services on Respondent’s web page.
Complainant contends that Respondent does not use the domain names in connection with a bona fide offering of goods or services because: (1) Respondent obtained the domain names with actual or constructive knowledge that Complainant adopted and sought to register the EDGEWORKERS mark; and (2) Respondent only uses the domain names to redirect internet users.
Complainant contends that Respondent has not made any legitimate noncommercial or fair use of the domain names because the redirections misleadingly divert potential consumers.
Complainant contends that Respondent uses the domain names in bad faith because the redirections were intentional and for commercial gain. Respondent registered or acquired the domain names in bad faith because Complainant’s prior adoption and registration application for EDGEWORKERS were readily discoverable the same day that Complainant submitted the application. Respondent registered or acquired the and domain names with actual or constructive knowledge of Complainant’s prior adoption and registration application. Furthermore, Respondent registered or acquired the and domain names only two days after Complainant adopted the EDGEWORKERS mark and applied for registration.
Complainant also references four demand letters as indication of bad faith. From October 2021 to December 2021, Complainant sent Respondent four letters requesting that Respondent modify the redirection of the domain names and cease use of Complainant’s registered mark. Complaint received no responses other than an acknowledgement from Respondent that it had received the first letter from Complainant.
B. Respondent
Respondent is a technology and software company based in California. Around March 2017, Respondent started to develop an “edge computing service” that would enable developers to deploy code directly on Respondent’s “edge network.” Respondent decided to use the Service Workers API, an industry-standard application programming interface (“API”) tool, as the API for Respondent’s new service. Respondent “started calling [the service] ‘Edge Workers,’ since it was essentially ‘Service Workers on the edge.’” In April and May 2017, Respondent’s software developers created several working documents with titles including terms such as “Edge Worker API,” “edgeworker,” and “edge worker project.” In July and August 2017, Respondent started registering and acquiring the disputed domain names, as well as several other related domain names. Respondent completed registration of the and domain names around August 3, 2017 and completed the acquisition of the and domain names around September 6, 2017 and September 15, 2017, respectively.
On September 13, 2017, Respondent admits that it became aware of Complainant’s registration application for the EDGEWORKERS mark. On September 18, 2017, Respondent started changing the branding of its new service from “Edge Workers” to “Cloudflare Service Workers” or “Cloudflare Workers,” because it discovered that Complainant had several products starting with “Edge.” On September 29, 2017, Respondent launched its new service under the name “Cloudflare Workers.” Respondent also acquired the cloudflareworkers.com domain name and had all internet traffic from , , and redirected to this new domain name.
On May 21, 2019, Respondent’s CLOUDFLARE WORKERS mark was registered based on its first-use date of September 29, 2017. On June 26, 2020, Complainant filed a Statement Alleging Use of EDGEWORKERS to support its application with the USPTO. The statement lists the date of first use as June 26, 2020.
Respondent states that its domain names incorporate Complainant’s registered mark. Respondent contends, however, that the mark is “not appropriate for registration because it is at best merely descriptive, or deceptively misdescriptive,” which rebuts the presumptive validity of Complainant’s registered mark. “Edge” and “Workers” are common industry terms related to edge network and service workers products and services. The USPTO had previously denied Complainant’s application to register EDGECOMPUTING because the term is descriptive of Complainant’s services. In addition, the USPTO required Respondent to disclaim the term “Workers” in its CLOUDFLARE WORKERS registration because the term is descriptive. Respondent contends that Complainant’s mark is a composite mark consisting of two descriptive terms, with no attributes that might render it distinctive as a whole. Complainant’s mark is therefore descriptive and unprotectable, despite the “fact that Complainant managed to pull one over” on the USPTO.
Respondent alternatively contends that Complainant’s mark is deceptively misdescriptive of Complainant’s services and thus unregistrable. Complainant launched its EdgeWorkers service because it was “inspired by” Service Workers, but the service lacks two key features of Service Workers. First, Complainant’s service does not use the Service Workers API. Second, Complainant’s service does not run on a web browser. The lack of these key features amounts to a deceptive misrepresentation of Complainant’s service.
Respondent contends that it has a legitimate interest in the disputed domain names. Respondent states that it is commonly known as “Cloudflare Workers,” but it contends that the domain names’ incorporation of the commonly used descriptive term “edge” is a bona fide offering of goods and services. Redirection of the domain names was not intended to divert internet traffic away from Complainant because, at the time Respondent registered or acquired the domains, Complainant was not using the EDGEWORKERS mark and had not yet obtained its trademark registration. Respondent maintains that it obtained the marks in an effort to reflect the edge computing service it was developing at the time.
Respondent contends that Complainant’s only evidence that Respondent registered or acquired the domain names in bad faith—an inference arising from the timing of Complainant’s EDGEWORKERS registration application—is insufficient. According to Respondent, more specific evidence is required to establish bad faith. When it was developing its “edge-computing workers brand,” Respondent registered or acquired many related domain names. Respondent maintains that it had no reason to know that Complainant had any trademark rights in EDGEWORKERS when Respondent registered or acquired the domain names because Complainant was not using the mark at that time. Complainant did not commence use of the mark until June 26, 2020.
Respondent also contends that it has not used the domain names in bad faith. Respondent has not sold or attempted to sell the domain names for a profit, has not engaged in a pattern of depriving others of the ability to obtain trademarks corresponding to their trademarks, and has not sought to disrupt Complainant’s business by diverting internet users. Furthermore, the domain names do not redirect to “‘edge workers’-centric” domain names and receive very little traffic.
C. Additional Submission Pertaining to Complainant’s Trademark Registration
Complainant contends that Respondent’s attack on the validity of Complainant’s registered EDGEWORKERS mark ignores Section 1057 of the Lanham Act, which states that a certification of registration for a mark that is registered on the Principal Register is prima facie evidence of the validity and ownership of the mark. According to Complainant, Respondent effectively invites the Panel to overrule the USPTO and ignore the legal effect of Complainant’s trademark registration under the Lanham Act.
FINDINGS
Complainant develops a software service called “EdgeWorkers,” and Respondent develops a software service called “Cloudflare Workers.”
Complainant and Respondent are competitors.
When Respondent was developing the Cloudflare Workers service in April and May 2017, Respondent’s software developers created several working documents with titles including terms such as “Edge Worker API,” “edgeworker,” and “edge worker project.”
In July and August 2017, Respondent started the process of registering and acquiring the disputed domain names, as well as several other related domain names.
On August 1, 2017, Complainant filed an intent-to-use application to register the mark EDGEWORKERS with the USPTO. That application was disclosed publicly on the USPTO’s website that same day.
On August 3, 2017, Respondent registered the and domains.
On September 9, 2017, Respondent acquired the domain from a third party.
On September 13, 2017, Respondent became aware of Complainant’s registration application for the EDGEWORKERS mark.
On September 16, 2017, Respondent acquired the domain from a third party.
On September 18, 2017, Respondent started changing the branding of its new service from “Edge Workers” to “Cloudflare Service Workers” or “Cloudflare Workers,” because it discovered that Complainant had several products starting with “Edge.”
Around September 2017, Respondent acquired the cloudflareworkers.com domain name and had all internet traffic from , , and redirected to this new domain name. The domain automatically redirects to edgeworker.cloudflareaccess.com.
On September 29, 2017, Respondent launched its new service under the name “Cloudflare Workers.”
On July 17, 2018, Respondent filed an application to register the mark CLOUDFLARE WORKERS with the USPTO. Respondent claimed September 29, 2017 as the date of first use of the mark.
On May 21, 2019, Respondent’s CLOUDFLARE WORKER mark was registered on the Principal Register.
On June 26, 2020, Complainant filed a Statement Alleging Use of EDGEWORKERS to support its application with the USPTO. The statement lists the date of first use as June 26, 2020. Complainant did not use the mark in commerce before this date.
On October 13, 2020, Complainant’s EDGEWORKER mark was registered on the Principal Register.
From October 2021 to December 2021, Complainant sent Respondent four demand letters requesting that Respondent discontinue the redirection of the domain names and cease use of Complainant’s registered mark. Respondent replied to the first demand letter by acknowledging receipt.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted 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
Complainant has rights to the EDGEWORKERS mark based on its federal registration with the USPTO. See Hyperdoc Inc. v. Dan Siroker, FA2111001972428 (Forum Dec. 21, 2021) (“Registration with the USPTO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i).”). This registration “prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.” WIPO Overview 3.0, § 1.2.1.
Respondent argues that the Panel should disregard the registration because the EDGEWORKERS mark is either merely descriptive or, alternatively, deceptively misdescriptive. In particular, Respondent submits a declaration from one of its employees that “Edge network” is a common industry term. Respondent also notes that the USPTO required Respondent to disclaim the term “WORKERS” in its CLOUDFLARE WORKERS trademark registration because the term merely describes Respondent’s services. Respondent also argues that, if EDGEWORKERS is not descriptive, then it is deceptively misdescriptive because Complainant’s EdgeWorkers service lacks two key features that are common to service workers services.
Complainant’s EDGEWORKERS registration is entitled to a presumption of validity. That presumption “includes the Trademark Office’s conclusion at the time of the registration that the mark was neither generic nor merely descriptive, but rather was distinctive.” Elec. Com. Media, Inc. v. Taos Mountain, FA0008000095344 (Forum Oct. 11, 200). The presumption of validity can be rebutted, but in a UDRP action, a registration will be disregarded only if a respondent provides clear and convincing evidence that the mark is invalid. See Kabbalah Centre Int‘l, Inc. v. Bnei Baruch USA, FA1101001369415 (Forum Apr. 4, 2021).
Respondent has not carried its burden of proving that the registration is invalid. Although Respondent has submitted some evidence that “edge” and “workers” are descriptive industry terms, Respondent has not provided any evidence that “edgeworkers” is a descriptive term when the mark is considered as a whole. Cf. U.S. Patent and Trademark Office v. Booking.com, B.V., 140 S. Ct. 2298 (2020) (marks must be assessed as a whole and not by looking solely at their constituent parts in isolation).
Nor has Respondent submitted clear and convincing evidence that Complainant’s EDGEWORKERS mark is deceptively misdescriptive. Respondent’s technical comparison between the EdgeWorkers service and service workers services does not demonstrate that the public is deceived by Complainant’s use of its trademark.
Finally, the Panel notes that, if Respondent truly believed Complainant’s mark was invalid, Respondent could have challenged the registration or sought cancellation of Complainant’s mark. Respondent concedes that it was aware of Complainant’s application in 2017, but it never filed a notice of opposition once the USPTO published Complainant’s application in the Official Gazette. Nor did Respondent file a petition for cancellation against the mark after it was registered in October 2020. Respondent’s failure to challenge Complainant’s registration before the USPTO reinforces the Panel’s view that Respondent has failed to submit clear and convincing evidence that Complainant’s registration is invalid. See Harvest Dispensaries, Cultivations & Production Facilities, LLC v. Rebecca Nickerson / Rock City Harvest, FA2004001892080 (Forum June 26, 2020) (“Respondent has not submitted any evidence that it has challenged those registrations or sought their cancellation”). The Panel therefore rejects Respondent’s attack on the validity of Complainant’s registration and finds that Complainant has established rights in the EDGEWORKERS trademark.
The Panel easily finds that Complainant’s mark and Respondent’s domain names are identical (in some cases) or confusingly similar (in others). Respondent does not deny that they are identical or confusingly similar and indeed concedes that its domain names “incorporate Complainant’s registered trademark.” The Panel agrees. The only differences between Complainant’s mark and Respondent’s domain names are that all of the domain names add a generic top-level domain (either .com or .net) and two of the domain names lack the “s” in EDGEWORKERS. These differences are immaterial. See Investors Bancorp, Inc. v. Andrew Cullo, FA2009001912997 (Forum Oct. 17, 2020) (finding domain names confusingly similar to mark where “Respondent incorporates Complainant’s [ ] mark into the disputed domain names, removes the ‘s’ from the end of the mark, and adds [a top-level domain] to the end of the mark”).
Accordingly, the Panel finds that the disputed domain names , , , and are confusingly similar to Complainant’s EDGEWORKERS trademark.
Rights or Legitimate Interests
Once a Complainant makes a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain names, the burden of production shifts to Respondent to provide evidence demonstrating rights or legitimate interests in the domain names (though the burden of proof always remains on Complainant). See Empire Flippers, LLC v. Ansh Gupta / Jamkain Media Ventures, FA2012001925050 (Forum Jan. 27, 2021); WIPO Overview 3.0, § 2.1.
Under Paragraph 4(c) of the Policy, Respondent has rights or legitimate interests in the disputed domain name if any of the following circumstances apply:
(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant has established that Respondent is not commonly known by the domain names. The EDGEWORKERS mark is featured throughout Complainant’s website. Although Respondent’s website uses the terms “edge” and “workers,” it does not contain the term “edgeworkers.” Respondent brands its service using the CLOUDFLARE WORKERS mark, and it further admits that its “services are commonly known as CLOUDFLARE WORKERS.” Respondent argues that “edge” is a descriptive term and that incorporating it into its domain names confers legitimate interests. But Respondent provides no evidence to support that it is commonly known by the actual domain names. Moreover, Respondent concedes that it abandoned the planned “edgeworkers” branding for its service once it learned of the Complainant’s registration application, indicating that Respondent no longer sought to be known by the domain names.
Complainant has also established that Respondent’s use of the disputed domain names is neither a use connected with a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Complainant emphasizes that Respondent’s only use of the domain names is to divert internet traffic away from Complainant’s EdgeWorkers service and redirect it toward websites promoting and advertising Respondent’s competing Cloudflare Workers service. Complainant’s redirection report from a third-party service confirms these redirections. In addition, the preponderance of the evidence supports that Complainant’s and Respondent’s services are very similar, competing products that would attract similar consumers. Respondent’s use of the domain names therefore is likely to divert traffic and mislead consumers. Using a domain name to redirect internet users to a website that offers competing services does not confer rights or legitimate interests. See Coachella Music Festival, LLC v. josh greenly / All Access Tickets, FA1507001629217 (Forum Aug. 10, 2015); Canva Pty Ltd v. Domain Adm’r, Case No. D2020-1208 (WIPO July 7, 2020).
Respondent provides no convincing evidence to rebut that its only use of the domain names is to redirect internet traffic. Respondent’s insistence that “edgeworkers” is a descriptive term for its services is of no avail, as the resolving websites do not use this term to describe its service. Respondent competes with Complainant, and Respondent has not demonstrated that use of the domain names bearing Complainant’s registered mark does not divert traffic away from Complainant’s website. See Google LLC v. Abbas Khan, FA2108001959001 (Forum Sept. 9, 2021) (use of domain name to divert users away from complainant’s website to respondent’s website “constitutes 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)”). Respondent thus has not demonstrated how incorporating this term into the domain names constitutes a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Although the Panel rejects all of Respondent’s arguments above that it has rights or legitimate interests, the one argument that raises a closer question is whether Respondent can show that, “before any notice of the dispute,” Respondent undertook “demonstrable preparations to use[ ] the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.”
When Respondent started registering the domain names for its new service, it referred internally to the service with terms such as “Edge Worker API,” “edgeworker,” and “edge worker project” before Complainant ever applied to register or publicly used the EDGEWORKERS mark. Respondent has submitted documentary evidence substantiating these preparations. Upon learning about Complainant’s registration application, Respondent abandoned its branding plan and engaged “in efforts to change the branding to ‘Cloudflare Service Workers’ or ‘Cloudflare Workers.’” It also started redirecting the domain names to a domain name with the CLOUDFLARE WORKERS mark.
The Panel finds that, at the time Respondent registered the domain names, it had made demonstrable preparations to use the domain names for a bona fide offering of services. However, upon learning of Complainant’s trademark application, Respondent abandoned those preparations and changed its brand to CLOUDFLARE WORKERS. Although this presents a close question, the Panel holds that this abandonment of the 2017 plans, and the subsequent inappropriate use of the domain names to redirect consumers to Respondent’s competing website, eviscerates any claim to rights or legitimate interests in the domain names today. Indeed, the fact that Respondent has not followed through on its initial plans, and has made no legitimate use of the disputed domain names in the last four-and-a-half-years, undermines any claim that Respondent has rights or legitimate interests in these domain names. See WIPO Overview 3.0, § 2.2 (“the passage of time may be relevant in assessing whether purported demonstrable preparations are bona fide”).
Accordingly, although it is a close question, the Panel finds that Complainant has shown, by a preponderance of the evidence, that Respondent lacks rights or legitimate interests in respect of the disputed domain names , , , and .
Registration and Use in Bad Faith
Under Paragraph 4(b) of the Policy, Complainant must establish that Respondent has used the disputed domain name in bad faith by proving that any of the following circumstances, among other things, are present:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
To satisfy the bad faith requirement, Complainant must demonstrate that Respondent both registered the domain names in bad faith and used them in bad faith. See Cosmetic Research Group v. John Miller, Case No. D2012-0014 (WIPO May 11, 2012) (discussing the “majority view that, under the Policy, paragraph 4(a)(iii), the conjunctive ‘and’ indicates that there must be bad faith both at the time of registration and subsequently”).
For the same reasons noted above, the panel finds that Respondent has used the domain names in bad faith by redirecting internet traffic away from Complainant and towards Respondent’s competing website. See Course Hero, Inc. v. Julius Njeri, FA2105001945579 (Forum June 29, 2021) (finding bad faith use of a domain name where it is “clear that the disputed domain name’s content attempts to compete with the Complainant and the services it offers”). Moreover, it is undisputed that Respondent had actual knowledge of Complainant’s rights in the EDGEWORKERS mark by the time Complainant sent the October 2021 demand letter, if not earlier, yet Respondent continued to use the domain names to redirect internet traffic. Complainant has shown that Respondent’s only purpose in its use of the domain names is to redirect internet users for commercial gain. See NBC Fourth Realty Corp. v. Protection Domain, FA1812001822152 (Forum Jan. 28, 2019) (bad faith use where respondent “attempt[ed] to attract, for commercial gain, Internet users to Respondent’s own website by creating a likelihood of confusion with Complainant’s mark”); Perot Systems Corp. v. Perot.net, FA0007000095312 (Forum Aug. 29, 2020) (same). Complainant has therefore established that Respondent has been using the domain names in bad faith.
However, bad faith use is not enough to justify transfer under the Policy; bad faith registration must also be found. “[U]se in bad faith is insufficient if the respondent originally registered the domain name for a permissible purpose.” Camon S.p.A. v. Intelli-Pet, LLC, Case No. D2009-1716 (WIPO Mar. 12, 2010).
Complainant has failed to show that Respondent registered the domain names in bad faith. The only evidence Complainant has is the timing of Respondent’s registration of the domain names just days or weeks after Complainant filed its trademark application. That timing is not itself enough to support a finding of bad faith.
Complainant looks at that timing and sees something suspicious. But Respondent has come forward with credible evidence that it had selected the EDGEWORKERS name before Complainant filed its trademark application, and before Respondent had any knowledge of Complainant’s plans. As such, the Panel finds that the timing that Complainant characterizes as suspicious is rather simply a coincidence. See Dave McMeekin / Images by Piedmont Portraits v. Lyubov Stepanova, FA1908001858228 (Forum Sept. 17, 2019) (“Respondent must have had actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name.”) (emphasis added); The Prudential Ins. Co. of Am. v. daniel clark, FA2005001897518 (Forum June 23, 2020) (“[A]ctual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii).”) (emphasis added).
Complainant’s argument that Respondent is charged with constructive knowledge of its rights in the EDGEWORKERS mark is misplaced. First, constructive knowledge is insufficient to demonstrate bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); Orbitz Worldwide, LLC v. Domain Librarian, FA1535826 (Forum Feb. 6, 2014) (“The Panel notes that [ ] the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith.”). Second, under United States law, registration, not an application, is constructive knowledge of the registrant’s claim of ownership in the mark. 15 U.S.C. § 1072. Complainant therefore has not demonstrated that the first three domains were registered in bad faith.
The fourth domain name presents a closer question because the evidence shows that Respondent had actual knowledge of Complainant’s application when Respondent acquired the last domain name. However, the Panel does not find that fact to establish that, when Respondent registered the fourth domain name on September 16, 2017 (three days after it learned of Complainant’s trademark application), Respondent registered that domain name in bad faith. Rather, the Panel finds that Respondent was simply following through on its original business plans, which were well underway. Moreover, Complainant had only filed an intent-to-use application, and did not have any use of the mark at that time. It thus was not clear to Respondent whether Complainant would ever follow through on that intention and whether Complainant would ever perfect its trademark rights in the EDGEWORKERS mark. See Dolopain LLC (an Ariz. Co.) v. T. J. Griffin Sr., Griffin IT Media, inc., Case No. D2021-1776 (WIPO Aug. 17, 2001) (“[A] pending intent-to-use application does not create trademark rights, nor does it establish that Respondent registered the Domain Name in bad faith.”). In fact, Complainant did not begin use of the mark until almost three years later, in June 2020. On these facts, the Panel finds that Respondent did not register the fourth domain name in bad faith.
Accordingly, the Panel finds that Complainant has not shown, by a preponderance of the evidence, that Respondent both registered and has used the disputed domain names , , , and in bad faith.
DECISION
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the , , , and domain names REMAIN WITH Respondent.
David H. Bernstein, as Chair, along with
Darryl C. Wilson and Paul M. DeCicco, as Panelists
Dated: March 9, 2022
