Akami vs. Cloudflare in Edgeworker Dispute
EdgeWorkers .com and 3 more Domain Name
Panelists: Mr. David H. Bernstein (Presiding), Mr. Darryl C. Wilson and Mr. Paul M. DeCicco
Brief Facts: The US Complainant is a technology and software company and has a software service called “EdgeWorkers”. On August 1, 2017, the Complainant filed an intent-to-use application with the USPTO to register the trademark EDGEWORKS, which was registered on October 13, 2020. On August 3, 2017, the Respondent registered the <edgeworkers.net> and <edgeworker .net> domain names in connection with an upcoming service that it intended to call “Edgeworkers”. The Respondent also acquired the <edgeworker.com> and <edgeworkers .com> Domain Names from respective third parties on September 9, 2017 and on September 16, 2017, respectively. On September 13, 2017, the Respondent became aware of Complainant’s application for the EDGEWORKERS mark and soon thereafter started changing the branding of its new service from “Edge Workers” to “Cloudflare Workers”. On September 29, 2017, the Respondent launched its re-named service “Cloudflare Workers”, and the said date is also reflected in the Respondent’s trademark application. The Complainant contends that its “EdgeWorkers” service is similar to Respondent’s “Cloudflare Workers” services and the <edgeworkers .com>, <edgeworkers .net>, and <edgeworker .com> Domain Names automatically redirect to <cloudflareworkers .com>; the <edgeworker .net> domain automatically redirects to <edgeworker.cloudflareaccess .com>. These redirections prevent internet users from reaching Complainant’s web pages or using Complainant’s EdgeWorkers service.
Held: The Respondent is using the Domain Names in bad faith by redirecting internet traffic away from the Complainant and towards Respondent’s competing website. However, bad faith use is not enough to justify transfer under the Policy; the bad faith registration must also be found. The Complainant failed to show that the Respondent registered the Domain Names in bad faith. The only evidence the Complainant has is the timing of the Respondent’s registration of the domain names just days or weeks after the Complainant filed its trademark application. That timing, though suspicious, is not itself enough to support a finding of bad faith. Rather the Respondent has come forward with credible evidence that it had selected the EDGEWORKERS name before the Complainant filed its trademark application, and before the Respondent had any knowledge of Complainant’s plans. It is evident that in April and May 2017, the Respondent’s software developers created several working documents with titles including terms such as “Edge Worker API”, “edgeworker” and “edge worker project” in relation to the services to be launched. As such, the Panel finds that the timing is simply a coincidence.
Complainants’ Counsel: David H. Judson of Law Office of David H. Judson, Texas, USA
Respondents’ Counsel: Courtney R. Blackwell of BLUE WATER LAW, P.C., California, USA
Reputation is Key to Proving Complainant’s Case in Common Surname Case
Panelist: Mr. Adam Taylor
Brief Facts: The Complainant, incorporated in 2012, provides information technology consultancy services under the name “McCoy”. The Complainant operates its main website at <mccoy-partners .com> and owns Benelux trademark for MCCOY, filed on August 26, 2019, registered on November 13, 2019, in classes 35 and 42. The disputed Domain Name was created on January 24, 2001 and various archive website screenshots dating from 2002 indicate that the disputed Domain Name has been used as a parking page with general pay-per-click links. The Complainant made numerous unsuccessful attempts to contact the Respondent, including via a domain name broker. The Complainant contends that the Respondent may not have been the first registrant of the disputed Domain Name.
Held: The Complainant provides no evidence of a later acquisition date, and the Panel must therefore proceed on the basis that the Respondent acquired the disputed Domain Name on the creation date shown in the WHOIS. In these circumstances, it does not assist the Complainant that the Respondent failed to respond to communications or to provide evidence of demonstrable preparations to use the disputed Domain Name for an active website, or even that there have been at least 15 negative UDRP decisions against the Respondent. As the Complainant and its rights did not exist in 2001, the disputed Domain Name could not have been registered in bad faith at that time. This is fatal to the Complainant’s case as the Complainant is required to prove both registration and use in bad faith. The Panel would add that, even if there had been evidence that the Respondent had registered the disputed Domain Name after the Complainant had acquired trade mark rights, this would not have been a straightforward case for the Complainant, notwithstanding the Respondent’s default and negative UDRP history, given the fact, unacknowledged by the Complainant, that “McCoy” is a common surname, as well as the lack of any evidence of reputation on the part of the Complainant or of use by the Respondent in connection with the Complainant’s industry.
Complainants’ Counsel: AKD N.V., Netherlands
Respondents’ Counsel: No Response
Credibility Key in Determining if Respondent’s Registration of Fanciful Mark in Good Faith
Panelist: Mr. Nick J. Gardner
Brief Facts: The Indian Complainant, since 1969, is a manufacturer of adhesives and sealants, construction and paint chemicals and similar solutions. One of its products is sold under the mark FEVICOL, for which it owns various trademarks, the earliest of which is the Indian trademark registered on March 2, 1960 by its predecessor. The Complainant asserts, the word “fevicol” has no separate or independent meaning apart from in relation to the Complainant or its products. The disputed Domain Name was registered on September 13, 2021 and does not resolve to a functioning website. On September 17, 2021, the Complainant received an email from a sender described as “fortunebusiness” indicating it owned the disputed Domain Name and enquiring as to whether the Complainant wished to buy it. The email stated “I am a domain investor and understand the worth of the name, before putting it to the open market I am checking with you”. Under informal response, the Respondent stated that he acquired the disputed Domain Name in an auction for starting own business in Czech Republic and denied making any such communication as to sale of the disputed Domain Name.
Held: There is no obvious reason why the Respondent should think the word “fevicol” suitable for Respondent’s own intended business. It is a coined term with no meaning apart from in relation to the Complainant. The Respondent did not offer any explanation as to how or why he chose this term and absolutely no corroborating evidence provided of the Respondent’s claimed business plans. In the present circumstances, the distinctive nature of the FEVICOL trade mark, and the evidence as to the extent of the reputation the Complainant enjoys in the FEVICOL trade mark, and the identical nature of the disputed Domain Name to the FEVICOL trade mark, and the lack of any credible explanation from the Respondent leads the Panel to conclude the registration and use was in bad faith. In the present case, the Panel concludes that it is highly unlikely that the Respondent selected the disputed Domain Name independently and without knowledge of the Complainant or its products.
Complainants’ Counsel: Khaitan & Co., India
Respondents’ Counsel: Self-represented
Churches Square Off Over Spiritual Domains
HigherSpiritualism .com and HigherSpiritualism .org
Panelist: Mr. Andrew D. S. Lothian
Brief Facts: The US Complainant is a religious institution founded in 1955 and claims to own copyright registrations for 221 of the 495 works said to be church teachings, consisting of manuscripts, sound and audio-visual recordings, and other works. The Complainant claims to have made first use of the mark CHURCH OF HIGHER SPIRITUALISM in 1970, with first use in commerce since 1980. Otherwise, it owns US and Australian word mark registrations from 2020. The Complainant asserts that the Respondent joined the Complainant’s church in 1976, adding that the Complainant and the Respondent later fell out after the latter moved to Australia. Further that the Respondent obtained certain church materials to which he was not entitled and retained these after said removal and excommunication and thereafter, the Respondent established his own church in Australia under the name HIGHER SPIRITUALISM. There is a pending court dispute between the parties in the United States. The disputed Domain Names were registered contemporaneously on February 17, 2017. The disputed Domain Name <higherspiritualism .com> is passively held, while the other disputed Domain Name <higherspiritualism .org> points to a website at <blogspot .com> which is titled “Church of Higher Spiritualism | The Teachings of Higher Spiritualism” and also features a copy of the email to the Center from the Respondent dated February 2, 2022.
Held: Having reviewed the Complaint and informal Response in this case, the Panel considers that it is not a typical cybersquatting case of the type which the Policy was designed to address. Essentially, the Parties have a long and complicated relationship extending over many decades and a much wider trademark dispute than a clear case of abusive cybersquatting of domain names. Among the multi-faceted aspects to this dispute which give rise to particular difficulty for a determination within the scope of the Policy are the fact that the Panel is not in a position to rule upon the effect of the Respondent’s ordination or holding of any office and/or its past activities within the Complainant’s church, the extent and relevance of the Respondent’s alleged personal relationship with the Complainant and the interpretation of the alleged license of copyright regarding the Complainant’s materials and the effect, if any, of the Respondent’s alleged excommunication from the Complainant’s church well before it registered the disputed Domain Names. Greater exploration and clarification of some or all of these matters would inform both the question of rights and legitimate interests in the disputed Domain Names and the question of registration and use in bad faith. The Panel notes that the Parties are already in court and considers that it is likely to be a more appropriate forum for a determination of the domain name issues arising from the Parties’ prior relationship. For completeness, the Panel notes that had it determined this case on the merits under the Policy, the Complaint would likely have failed.
Complainants’ Counsel: Fasthoff Law Firm PLLC, United States
Respondents’ Counsel: Self-represented
Is There Space for Both Parties to Flex Their Trademark Rights?
Panelist: Mr. Knud Wallberg
Brief Facts: The Complainant is a provider of flexible offices, workshops, industrial and self-storage spaces throughout the United Kingdom under the brand FLEXSPACE. It owns United Kingdom and European Union trademark registrations dated November 1, 2016 and December 22, 2017 respectively under classes 35, 36, 39 and 43. The Respondent is the public limited company registered under the laws of Norway and owns the Norwegian trademark registration for FLEXSPACE dated December 18, 2020, for services in classes 35 and 42. The Respondent acts as an agent in the professional leasing market who finds suitable offices and connects the potential tenants with the office operators. The disputed Domain Name was registered on June 22, 2020, and resolves to an active website for the Respondent’s business. The Complainant sent a cease and desist letter to the Respondent on September 28, 2021. The Respondent did not file a formal response in these proceedings.
Held: In the present case, the disputed Domain Name reflects both the company name and the registered trademark for the Respondent. According to the publicly available information the date of incorporation of the Respondent’s company was May 6, 2020, and it was registered in the companies register on June 10, 2020, i.e. before the disputed Domain Name was registered. In addition, the Panel notes that while the disputed Domain Name was registered before the Respondent’s registration of its matching trademark, the Panel considers that there was a relatively short time between both registrations, and that the Respondent’s use of the disputed Domain Name before its trademark application seemed already to correspond to its business purpose. While the Complainant’s trademark rights predate the Respondent´s incorporation as a company and its trademark registration, the composition of the disputed Domain Name combines the commonly used terms “flex” and “space” and cannot deny the possibility that both Parties developed coincidentally but independently their respective businesses in different jurisdictions. The Panel thus finds on the available record that there is no evidence or indication that the disputed Domain Name has been used in bad faith under the Policy. On the contrary, the Domain Name is used as URL-address for the website of the Respondent’s business and additionally being used for the Respondent’s email address.
Complainants’ Counsel: Freeths LLP, United Kingdom
Respondents’ Counsel: Self-represented