It’s not often that two large companies are involved in a cybersquatting dispute under the Uniform Domain Name Dispute Resolution (UDRP). But that was the case in a just-decided dispute between two Content Delivery Network companies over four domain names.
Akamai (NASDAQ: AKAM) filed the dispute against four domain names Cloudflare (NYSE: NET) owns: edgeworkers.com, edgeworkers.net, edgeworker.com, and edgeworker.net.
On the surface, this case looked bad for Cloudflare. It began registering and acquiring the domain names just days after Akamai filed an intent-to-use trademark application for Edgeworkers with the U.S. Patent and Trademark Office in August 2017.
But Cloudflare provided evidence that, before Akamai filed its trademark application, Cloudflare had been working on a service called EdgeWorkers. After becoming aware of Akamai’s trademark application, it decided to change the name 0f its service to Cloudflare Workers. (The edge is used to refer to computing closer to end devices rather than in the cloud.)
So while it appeared to Akamai that Cloudflare registered the domains in response to Akamai’s trademark application, it turns out that wasn’t the case.
Cloudflare forwards some of the domains to its services, and the three-person National Arbitration Forum panel found that Cloudflare is using the domains in bad faith by doing so. However, the panel found that Cloudflare didn’t register the domains in bad faith because it had planned to use the domains for its own product before becoming aware of Akamai’s plans. A Complainant must prove that domains were both registered and used in bad faith in order to win a UDRP.
Therefore, the panel denied Akamai’s cybersquatting claim, and the domains will remain with Cloudflare.
