WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Cloudflare, Inc., Cloudflare Germany GmbH v. Conor Mcknight

Case No. DEU2019-0005

1. The Parties

The Complainants are Cloudflare, Inc., United States of America and Cloudflare Germany GmbH, Germany, self-represented.

The Respondent is Conor Mcknight, United Kingdom, self-represented.

2. The Domain Name, Registry and Registrar

The Registry of the disputed domain name <cloudflare.eu> is the European Registry for Internet Domains (“EURid” or the “Registry”). The registrar of the disputed domain name is TLD Registrar Solutions Ltd (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2019. On May 10, 2019, the Center transmitted by email to the Registry a request for registrar verification in connection with the disputed domain name. On May 16, 2019, the Registry transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainants filed an amended Complaint on May 22, 2019.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the .eu Alternative Dispute Resolution Rules (the “ADR Rules”) and the World Intellectual Property Organization Supplemental Rules for .eu Alternative Dispute Resolution Rules (the “Supplemental Rules”).

In accordance with the ADR Rules, Paragraph B(2), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 24, 2019. In accordance with the ADR Rules, Paragraph B(3)(a), the due date for Response was July 9, 2019. The Response was filed with the Center on May 25 and 26, 2019. The Center verified whether the Response together with the amendment to the Response satisfied the formal requirements of the ADR Rules and the Supplemental Rules. In accordance with the ADR Rules, Paragraph B(3)(b), the Center sent a notification that the Response was administratively deficient on May 27, 2019. The due date for curing the deficiencies of the Response was June 3, 2019. The Respondent did not amend the Response and did not cure its deficiencies. In accordance with ADR Rules, Paragraph B(3)(f), the Center notified the Parties of the Respondent's default on June 4, 2019.

The Center appointed Assen Alexiev as the sole panelist in this matter on June 21, 2019. 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 ADR Rules, Paragraph B(5).

4. Factual Background

The Complainant Cloudflare, Inc. is the owner of the European Union trademark CLOUDFLARE with registration No. 009919275, registered on October 13, 2011 for goods and services in International Classes 9 and 42 (the “CLOUDFLARE trademark”).

The disputed domain name was registered on January 31, 2013. It resolves to an inactive Facebook webpage.

5. Parties’ Contentions

A. Complainant

The Complainants submit that the Respondent registered the disputed domain name on January 31, 2013, at which point it had been a paying customer of the Complainants for years and had knowledge of the CLOUDFLARE trademark.

The Complainants further submit that on March 14-18, 2019, the Complainant Cloudflare, Inc. approached the Respondent with an offer to purchase the disputed domain name at the Respondent’s cost in an attempt to reach an amicable settlement. The Respondent responded with an offer to transfer the disputed domain name to the Complainant Cloudflare, Inc. in exchange for free services by the Complainant. This was rejected by the Complainant Cloudflare, Inc., which reiterated its offer to pay the Respondent its costs related to the disputed domain name. The Respondent then replied by asking GBP 100,000.

The Complainants state that the disputed domain name is identical to the CLOUDFLARE trademark, as it consists of the same standard characters.

According to the Complainants, the Respondent does not have rights or legitimate interests in the disputed domain name under Article 21(2) of Commission Regulation (EC) No. 874/2004 (the “Regulation”). The Respondent has not used the disputed domain name to offer goods or services, and has not carried out a legitimate and noncommercial or fair use of the disputed domain name without intent to mislead Internet users. The Complainants further state that the Respondent has not been commonly known by the disputed domain name, has not had any prior business association with the Complainant and has not been granted a license to use the CLOUDFLARE trademark. Rather, the Respondent has used the CLOUDFLARE trademark in the disputed domain name to attract Internet users to various websites which display information that is not connected with the Complainants or their products.

The Complainants add that when the Complainant Cloudflare, Inc. approached the Respondent to inquire about purchasing the disputed domain name, the Respondent indicated that it was used for a website devoted to paragliding. However, the Internet archive records for the disputed domain name available at the Wayback Machine show that the earliest use of the disputed domain name was around June 2012, when the only content on the associated webpage was a solicitation for the purchase of the disputed domain name. Around a year later, the disputed domain name began to point at <steam-hacks.com> – another domain name owned by the Respondent. In April 2014, the disputed domain name began to point at a Facebook page associated with the Respondent, which continued until about March 14, 2016, when the disputed domain name began to redirect to <pornsocket.com> – another domain name of the Respondent. In 2018, the disputed domain name began to point at <networkflare.com> – yet another domain name owned by the Respondent. Currently the disputed domain name is pointing back at the Respondent’s Facebook page. The Respondent, being a natural person, has therefore always used the disputed domain name only to redirect to various unrelated websites since its registration, which according to the Complainants shows that the Respondent has no legitimate purpose as understood in Article 21(2) of the Regulation, as the redirection to promote certain websites is by itself insufficient to provide a legitimate interest.

The Complainants contend that the disputed domain name has been registered in bad faith. This is demonstrated by the Respondent’s attempt to negotiate or sell the disputed domain name to the Complainant Cloudflare, Inc. in exchange of a benefit in great excess of the Respondent’s costs for the disputed domain name and by the Respondent’s threats to place pornography or other content on the disputed domain name with the purpose to increase the advertising revenues from the disputed domain name.

B. Respondent

The Respondent submitted an informal Response to the Center. It did not reply to the Center’s invitation to cure the formal deficiencies of its Response and did not submit a compliant Response as required by the ADR Rules, Paragraph B(3)(b), within seven days of the Response Deficiency Notification. The Center notified the Respondent’s default, and the Respondent did not file a challenge against this notification under the ADR Rules, Paragraph B(3)(g). Under the ADR Rules, Paragraph B(3)(d), one of the consequences of the Respondent’s default is that the non-compliant Response shall be deemed not submitted by the Respondent. The Panel has reviewed the non-compliant Response and the other contents of the case file and is not aware of any reasons why the Respondent’s default could not have been remedied within the time limit prescribed by the ADR Rules or excused, and has decided not to accept and consider the non‑compliant Response. While the Panel has decided that, in accordance with the ADR Rules, Paragraph B(3)(d), the non-compliant Response is not accepted and will not be considered, the Panel further notes that if the content of the Respondent’s email communications were to be considered these would not have changed the outcome of this proceeding.

6. Discussion and Findings

Under Paragraph B(11)(d)(1) of the ADR Rules in order for the Complaint to succeed, the Complainant has to establish the following:

(i) that the disputed domain name is identical or confusingly similar to a name in respect of which a right is recognized or established by the national law of a Member State and/or Community law and; either

(ii) that the disputed domain name has been registered by the Respondent without rights or legitimate interest in the name; or

(iii) that the disputed domain name has been registered or is being used in bad faith.

Article 22(10) of the Regulation provides that “[f]ailure of any of the parties involved in an ADR procedure to respond within the given deadlines or appear to a panel hearing may be considered as grounds to accept the claims of the counterparty.”

A. Identical or Confusingly Similar to a name in respect of which a right or rights are recognized or established by national law of a Member State and/or Community law

Paragraph B(11)(d)(1)(i) of the ADR Rules requires that the disputed domain name be “identical or confusingly similar to a name in respect of which a right is recognized or established by national law of a member State and/or Community law”.

The Complainants have provided evidence and have established that the Complainant Cloudflare, Inc. has trademark rights in the CLOUDFLARE trademark, registered as a European Union trademark, while the Complainant Cloudflare Germany GmbH is related to the Complainant Cloudflare, Inc. This is sufficient for the Panel to make a finding that the Complainants have a right recognized by European Union law for the purposes of Paragraph B(11)(d)(1)(i) of the ADR Rules.

It is well established in decisions under the ADR Rules that the country code Top-Level Domain “.eu” may be disregarded for the purposes of test for identity or confusing similarity between a trademark and a domain name. Therefore, the relevant part of the disputed domain name is “cloudflare” which is identical to the Complainants’ CLOUDFLARE trademark.

In view of the above, the Panel finds that the disputed domain name is identical to the Complainants’ CLOUDFLARE trademark, and that the Complainants have established the first element of the test under Paragraph B(11)(d)(1) of the ADR Rules.

B. Rights or Legitimate Interests

Under the ADR Rules, the Complainants bear the burden of proof that the Respondent lacks rights or legitimate interests in the disputed domain name. However, the existence of negative facts is difficult to prove, and the relevant information for the Respondent and for its activities (including any potential evidence of rights or legitimate interests) is mostly in its sole possession and control. Taking this into consideration, the Panel accepts that if the Complainants make a prima facie demonstration that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production would shift to the Respondent to submit appropriate evidence and arguments that it has rights or legitimate interests in the disputed domain name. If the Respondent fails to come forward with such relevant evidence, the Complainants would be deemed to have satisfied the second element of the test under Paragraph B(11)(d)(1) of the ADR Rules.

The Complainants contend that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent has not been commonly known by the disputed domain name, has not had any prior business association with the Complainants and has not been granted a license to use the CLOUDFLARE trademark. The Complainants further state that the Respondent has not used the disputed domain name to offer goods or services and has not carried out a legitimate noncommercial or fair use of the disputed domain name without intent to mislead Internet users. The Complainants point out that the Respondent’s claim that the disputed domain name was used for a website devoted to paragliding is not supported by evidence. Rather, the evidence shows that the Respondent has used the CLOUDFLARE trademark in the disputed domain name to attract Internet users to various websites of the Respondent that display information not connected with the Complainants or their products. Thus, the Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has not submitted a compliant Response and has not submitted evidence that contradicts the Complainants’ contentions. If the Respondent had any relevant evidence supporting the rights or legitimate interests for registering or using the disputed domain name, it could have provided it.

The disputed domain name is identical to the CLOUDFLARE trademark and Internet users may regard it as referring to an official website of the Complainants for the European Union. It has redirected visitors to various websites operated by the Respondent that display information that is not connected to the Complainant or its products.

In addition, as contended by the Complainants, the Respondent has been their customer for a significant period of time.

In view of the above and in the lack of any substantive denial of it by the Respondent, the Panel is satisfied that the Respondent, being well aware of the goodwill of the Complainants and of their CLOUDFLARE trademark, has registered and used the disputed domain name in an attempt to exploit this goodwill by attracting Internet users to its other websites without authorization from the Complainants. In the Panel’s view, such conduct does not give rise to rights or legitimate interests of the Respondent in the disputed domain name.

Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered or Used in Bad Faith

Under Paragraph B(11)(f)(4) of the ADR Rules, if the disputed domain name was intentionally used to attract Internet users, for commercial gain to the Respondent’s website or other online location, by creating a likelihood of confusion with a name on which a right is recognized or established, by national and/or Community law, such likelihood arising as to the source, sponsorship, affiliation or endorsement of the website or location or of a product or service on the website or location of the Respondent, this may be evidence of the registration or use of the disputed domain name in bad faith.

Under Paragraph B(11)(f)(1) of the ADR Rules, the existence of circumstances indicating that the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name to the holder of a name, in respect of which a right is recognized or established by national and/or Community law, if found by the Panel to be present, may be evidence of the registration or use of a domain name in bad faith.

As discussed above, the Complainants have established their rights in the CLOUDFLARE trademark, registered in the European Union, and have thus proven that they have rights recognized by European law. The Complainants have also submitted a copy of their correspondence with the Respondent. This correspondence shows that the Respondent offered to transfer the disputed domain name to the Complainants in exchange of certain services that it was receiving from them, for which the Respondent has indicated that it was paying to the Complainants GBP 1,500 per month. In response to the Complainants’ offer to pay to the Respondent its costs related to the disputed domain name, the Respondent stated that these costs amounted to GBP 100,000.

The Respondent was given a fair opportunity to respond to the Complaint and to present its case. The Respondent has not challenged the evidence submitted by the Complainants and has not provided evidence or arguments to rebut any of the contentions of the Complainants.

The disputed domain name is identical to the Complainants’ CLOUDFLARE trademark, so consumers may easily regard it as an official domain name of the Complainants for the European Union. The Respondent was a customer of the Complainants for years and was well aware of them and of their services provided under the CLOUDFLARE trademark when it registered the disputed domain name. After its registration, the Respondent has used the disputed domain name to redirect Internet users to various websites of the Respondent that display information not connected with the Complainants or their products. In its correspondence with the Complainants, the Respondent has attempted to receive for free services worth GBP 1,500 per month from the Complainants and has indicated an amount of GBP 100,000 in response to the Complainants’ offer to pay to the Respondent its costs in relation to the disputed domain name in exchange of its transfer to the Complainants.

The above circumstances satisfy the Panel that the Respondent registered the disputed domain name with the Complainants’ name and trademark in mind and with speculative purposes – in view of the attractiveness of the disputed domain name for the Complainants and with the expectation to extract significant profit out of its transfer to the Complainants. The circumstances also show that the Respondent has intentionally used the disputed domain name to attract Internet users for commercial gain to the Respondent’s websites by creating a likelihood of confusion with the CLOUDFLARE trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites or of the products or services on these websites of the Respondent.

Therefore, and in the lack of any substantive rebuttal by the Respondent or evidence to the contrary, the Panel accepts that he Respondent has registered and used the disputed domain name in bad faith under Paragraph B(11)(f)(1) and Paragraph B(11)(f)(4) of the ADR Rules, and that the condition under Paragraph B(11)(d)(1)(iii) of the ADR Rules is satisfied.

For the above reasons, the Panel finds that Complainants have established the prerequisites under Paragraph B(11)(d)(1) of the ADR Rules for the transfer of the disputed domain name.

7. Decision

For the foregoing reasons, in accordance with the ADR Rules, Paragraph B(11), the Panel orders that the disputed domain name <cloudflare.eu> be transferred to the Complainant Cloudflare Germany GmbH.1

Assen Alexiev
Sole Panelist
Date: July 2, 2019


1 The Complainant Cloudflare Germany GmbH has its registered office in Germany, so it satisfies the general eligibility criteria for registration set out in Paragraph 4(2)(b) of Regulation (EC) No 733/2002.