WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Cloudflare, Inc. v. Private Registrant, Digital Privacy Corporation / Richard Sheng

Case No. DAI2019-0001

1. The Parties

Complainant is Cloudflare, Inc., United States of America (“United States”), internally represented.

Respondent is Private Registrant, Digital Privacy Corporation, United States / Richard Sheng, United States.

2. The Domain Name and Registrar

The disputed domain name <cloudflare.ai> (the “Domain Name”) is registered with 101domain, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2019. On August 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 8, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 9, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 9, 2019. The Center received an email communication from Respondent on August 11, 2019, indicating that it was aware of the Complaint.

The Center verified that the Complaint, together with the amended 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 Respondent of the Complaint, and the proceedings commenced on August 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 3, 2019. Pursuant to paragraph 6 of the Rules, the Center notified the Parties of the commencement of the panel appointment process on September 4, 2019.

The Center appointed John C. McElwaine as the sole panelist in this matter on September 9, 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 Rules, paragraph 7.

4. Factual Background

Complainant is a San Francisco, California based company operating in the fields of Internet infrastructure and website security. Complainant is the owner of the registered trademark, “CLOUDFLARE”, in the United States (U.S. Reg. No. 4061249, registered in November 22, 2011) and in the European Union (Reg. No. 009919275, registered in October 13, 2011) (collectively, the “CLOUDFLARE mark”).

On January 9, 2018, Respondent registered the Domain Name with the Registrar. The Domain Name resolves to a webpage stating that it will be the “Future home of … cloudflare.ai”.

5. Parties’ Contentions

A. Complainant

Since 2010, Complainant alleges that it has used in commerce the CLOUDFLARE mark for goods and services related to computer software, namely, computer software to monitor and control online traffic to computer servers and computer anti-virus software. Complainant asserts that it is a large and reputable company, with offices in 11 cities and a network that spans more than 80 countries. Complainant alleges that its network serves more than 1 billion unique Internet Protocol (IP) addresses daily and 2 million domain name system (DNS) queries per second. Complainant asserts that approximately 10% of the Fortune 1,000 companies are its customers.

After discovering Respondent’s registration of the Domain Name, which resolved to a parked webpage, Complainant asserts that it sent a demand letter on April 29, 2019. Complainant contends that Respondent received this demand letter, but never responded, and that Complainant again sent a demand letter on June 3, 2019, which also never received a response. As such, this proceeding was instituted.

With respect to the first element of the Policy, Complainant contends that the Domain Name is identical to its registered CLOUDFLARE mark. Complainant asserts that the addition of “.ai” within the Domain Name does not dispel any confusing similarity between the Domain Name and Complainant’s CLOUDFLARE mark and it is not sufficient to distinguish it from Complainant’s mark.

With respect to the second element of the Policy, Complainant contends that Respondent is not commonly known by the Domain Name and has not made a bona fide use of the Domain Name. In addition, it is asserted that Respondent is not a licensee of, or otherwise affiliated with, Complainant, and Respondent has not been authorized by Complainant to use the CLOUDFLARE mark. Complainant points out that there is no evidence that Respondent has ever been known by the name “Cloudflare” and the only relationship with the term “Cloudflare” is the registration of the Domain Name. Complainant alleges that its evidence shows that the Domain Name resolves to a generic “parking page” hosted by the Registrar, and therefore, is not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use.

With respect to the third element of the Policy, Complainant alleges that the Domain Name was registered in bad faith to prevent Complainant, as the owner of the CLOUDFLARE mark from reflecting its mark in a corresponding domain name. Complainant also alleges that Respondent registered the Domain Name for the purpose of disrupting Complainant’s business and activities. Complainant acknowledges that Respondent is passively holding the Domain Name, but asserts that any attempt to actively use the Domain Name would inevitably lead to a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s website by Internet users who would inevitably be led to believe that such a site would be owned by, controlled by, established by, or in some way associated with Complainant.

Finally, Complainant asserts that Respondent’s passive holding of the Domain Name does not insulate it from a finding of bad faith. Complainant asserts that the CLOUDFLARE mark is distinctive and has significant brand reputation, ranking 12th in the Cloud 100, Forbes Top Private Companies in Cloud Computing 2018. Complainant also asserts that Respondent failed to respond to two demand letters. Complainant also alleges that Respondent is concealing its identity through a privacy / proxy service. Complainant also asserts that, given the reputation of the CLOUDFLARE mark, it is implausible that there is any good faith use to which the Domain Name may be used. Complainant argues that bad faith is evident because “.ai” is a Top-Level Domain (“TLD”) that shares the same acronym as artificial intelligence, an emerging technology that technology companies, including Complainant, are interested in exploring.

B. Respondent

Respondent did not reply to Complainant’s contentions. In Respondent’s email of August 11, 2019, Respondent requested a copy of the Complaint and asked what options the Respondent had. A copy of the Complaint and the annexes were provided to Respondent on August 14, 2019, and the Center directed Respondent to the Response filing guidelines available on the Center’s website.

6. Discussion and Findings

Even though Respondent has failed to substantively respond, paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with evidence demonstrating:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

Because Respondent did not provide a substantive response, the Panel may accept as true the reasonable factual allegations stated within the Complaint and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited v. AnonymousSpeech LLC and Global House Inc., WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International, WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules, and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires Complainant show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Complainant has provided evidence that it is the owner of two trademark registrations for CLOUDFLARE and that since 2010 Complainant has used the CLOUDFLARE mark. The Panel finds that Complainant owns valid trademark rights in the CLOUDFLARE mark, which predate the registration of the Domain Name, and that the Domain Name is identical to the CLOUDFLARE mark.

Accordingly, the Panel finds that the Domain Name is confusingly similar to Complainant’s CLOUDFLARE Mark in which Complainant has valid trademark rights. Therefore, Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Under the Policy paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent holds no rights or legitimate interests in the Domain Name in question. A complainant need only make a prima facie showing on this element, at which point the burden shifts to respondent to present evidence that it has some rights or legitimate interests in the domain name at issue. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141 (discussing and citing the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, section 2.1); see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252.

Here, Complainant has made a prima facie showing that Respondent lacks any rights or legitimate interests in the Domain Name. In particular, Complainant has demonstrated that there is no evidence in the WhoIs data for the Domain Name indicating that Respondent has been commonly known by the term “Cloudflare”. Complainant also has established that Respondent is not authorized to register or use the CLOUDFLARE mark. Respondent failed to submit any arguments on this point.

Respondent may establish rights or legitimate interests in the Domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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.”

Given the unique and well-known nature of Complainant’s CLOUDFLARE mark, and based on the uncontested facts of the record, it is inconceivable that Respondent can establish rights or legitimate interest in a domain name incorporating a third-party’s well-known trademark. See Red Bull GmbH v. Premiere-PTC-Network, WIPO Case No. D2008-1077.

The Panel also finds that Respondent is not making bona fide use of the Domain Name under paragraph 4(c), as the Domain Name links to what appears to be a “parked” page. The Panel recognizes that parking webpages may be permissible in some circumstances, as discussed in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.9. However, none of those factors are present here. There is no evidence that the Domain Name consists of dictionary or common words or phrases. Instead, the Domain Name appears to have been registered with the intent to confuse Internet users who by searching for Complainant will be directed to Respondent’s parked webpage for commercial gain. Such activity does not provide rights or legitimate interests in the Domain Name under the Policy. See M.F.H. Fejlesztõ Korlátolt Felelõsségû v. Satoshi Shimoshita, WIPO Case No. D2014-1726.

Lastly, Complainant’s assertions combined with the WhoIs registrant information indicate that Respondent is not commonly known by the Domain Name under Policy paragraph 4(c)(iii) and, therefore, has no proprietary rights or legitimate interests in the CLOUDFLARE mark. The WhoIs data provided by the Registrar for the Domain Name indicates that the registrant’s name is Richard Sheng.

Based on the foregoing, Complainant has made a prima facie showing of Respondent’s lack of any rights or legitimate interests and Respondent has failed to rebut that showing. The Panel finds that Respondent does not have rights or legitimate interests in the Domain Name and that Complainant has met its burden under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.

Bad faith registration can be found where a respondent “knew or should have known” of complainant’s trademark rights and nevertheless registered a domain name in which he had no right or legitimate interest. See Accor v. Kristen Hoerl, WIPO Case No. D2007-1722. Here, the CLOUDFLARE mark is a unique and distinctive mark representing the goodwill of a well-known global Internet services provider. Based on Complainant’s submission, which was not rebutted by Respondent, Respondent must have known of Complainant’s CLOUDFLARE mark when it registered the Domain Name. See WhatsApp Inc. v. Francisco Costa, WIPO Case No. D2015-0909 (finding that “it is likely improbable that Respondent did not know about Complainant’s WHATSAPP trademark at the time it registered the Disputed Domain Name considering the worldwide renown it has acquired amongst mobile applications, and the impressive number of users it has gathered since the launch of the WhatsApp services in 2009”.) Supporting the inference that Respondent knew of Complainants’ trademark rights, Respondent registered a Domain Name that was identical to Complainant’s CLOUDFLARE mark in the “.ai” TLD, which may be used by technology companies, such as Complainant, that are exploring or launching artificial intelligence products and services .

There is also substantial authority that registration of a domain name that is confusingly similar to a well-known trademark by any entity that has no relationship to that mark, is itself sufficient evidence of bad faith use. See Allianz, Compañía de Seguros y Reaseguros S.A. v. John Michael, WIPO Case No. D2009-0942 (“the Panel concurs with previous WIPO UDRP decisions holding that registration of a well-known trademark as a domain name is a clear indication of bad faith in itself, even without considering other elements”), citing, Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Pepsico, Inc. v. “null,” aka Alexander Zhavoronkov, WIPO Case No. D2002-0562.

The fact that the Domain Name was not used in connection with a competing website does not obviate a finding of bad faith. Section 3.3, WIPO Overview 3.0, instructs that panelists should examine the totality of the circumstances in each case and that the following factors that have been considered relevant in applying the passive holding doctrine: “(i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” Id.

Complainant’s CLOUDFLARE mark is distinctive, strong and well known. Complainant asserts that Respondent likely registered the Domain Names to send fraudulent email messages, including those that contain spam or phishing attempts. In addition, Respondent failed to respond to two demand letters and failed to provide a substantive response to the Complaint. Respondent also hid its identity behind a privacy/proxy service. Lastly, as discussed above, it is implausible that Respondent would legally be able to use the identical CLOUDFLARE mark to offer goods or services in the field of artificial intelligence. Without a substantive response from Respondent, there is simply nothing to refute bad faith intention to register and use the Domain Name.

For these reasons, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name 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 Domain Name, <cloudflare.ai>, be transferred to Complainant.

John C McElwaine
Sole Panelist
Date: September 19, 2019

¹ The Panel notes that “.ai” is the country-code Top-Level Domain (“ccTLD”) for the Anguilla Islands.