Qatar Airways Q.C.S.C. of Doha, Qatar, just lost a second UDRP in a month, its attempt to grab the domain name DiscoverQatar.com
Last month the state owned Airlines lost a UDRP on two other generic domain names, discoverqatar.org and qatartourism.org last month.
The domain holder represented himself in the UDRP
The sole panelist of Adam Taylor found dismissed the UDRP but failed to Find Reverse Domain Name Hijacking even though Qatar Airways told the panel it had a US trademark on the term but did not tell the panel the trademark had been cancelled.
The Airlines claim to the term DiscoverQatar seems to arise from:
1. A cancelled US trademark on the term
2.A Qatari Trademark on the terms and
3. Language on its own website following text under “Contact Us”: “Contact Discover Qatar to start planning your Qatar Stopover”. Beneath that there is the “Discover Qatar” logo, under which appears “A division of Qatar Airways”. The text than continues: “What is Discover Qatar? Discover Qatar (DQ) is a Destination Management Company (DMC) under Qatar Airways Holidays to facilitate the development of Qatar as a tourist destination. DQ brings together accommodation, transport, tours and excursion suppliers together and ensures only quality ground services to tour operators who want to feature Qatar as a destination.”
The disputed domain has a creation date of July 27, 2000.
According to the Registrar, the disputed domain name has been registered to the Respondent Domain Admin since “at least” July 14, 2014.
There is no evidence of use of the disputed domain name for an active website. When visited by the Panel, the website consisted purely of a form inviting “business enquiries”.
Here are the highlights:
The Panel disregards the Complainant’s US trade mark No. 3,429,764 as this has been cancelled. The Panel echoes the comment by the panel in the Travelindex Case that it is surprising that the Complainant did not draw attention to this fact.
That leaves the Complainant’s Qatari trademarks. The Panel considers that the disputed domain name is confusingly similar to those trade marks, the textual component of which consists of the term “discover Qatar” – both in English and transliterated into Arabic. Paragraph 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states:
For the above reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 2.1 of WIPO Overview 2.0 explains the consensus view concerning the burden of proof regarding lack of rights or legitimate interests in UDRP cases:
There is no evidence that the disputed domain name has ever been used for an active website. The Respondent acknowledges that, at one point, the disputed domain name was used for a registrar parking page but neither it nor the Complainant has supplied any archive screenshot illustrating such usage and it is not the role of the Panel to hunt for such evidence.
The Panel is of the opinion that it is appropriate to consider this case in the context of the principles of “passive holding” set out in the well-known case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. There the panelist noted that “the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith” and concluded that “it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”.
The panelist went on to say that
“… in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent’s behaviour. A remedy can be obtained under the Uniform Policy only if those circumstances show that the Respondent’s passive holding amounts to acting in bad faith.”
Here, a major obstacle to a finding of passive holding as an indicator of bad faith is that, the term “Discover Qatar” is highly descriptive and one which many people in the tourism industry may want to use for its descriptive value. The Complainant must therefore work hard to establish the likelihood that the Respondent selected the disputed domain name by reference to the Complainant’s trade mark and not for its obvious descriptive meaning.
While the Complainant does indeed claim that its DISCOVER QATAR trade mark is “internationally well known”, this is not borne out by the supporting evidence supplied with the Complaint, which consists only of the “Qatar Stopover” page on its website at “www.qatarairways.com” as of October 12, 2014, mentioned in section 4 above, plus two 2005 invoices (for hotel accommodation and tourism services) featuring the DISCOVER QATAR logo and four Qatar Airways posters/advertisements also featuring the logo – two undated and the others dated 2008, 2012, and 2014 respectively.
It is not clear precisely when the Respondent acquired the disputed domain name.
As mentioned in section 4 above, the Registrar’s Whois database gives a “creation date” of July 27, 2000.
The Complainant assumes that the Respondent acquired the disputed domain name on the creation date and the Response clearly implies likewise.
However, on Registrar verification, the Registrar informed the Center that the disputed domain name had been registered to the Respondent Domain Admin since “at least” July 14, 2014, although that still leaves open the possibility that the disputed domain name was previously registered to an entity connected with the current registrant.
In any event, there is no evidence indicating the scale and extent of the Complainant’s use of the mark at any point in time.
Even if the Panel proceeds on the basis most favourable to the Complainant, namely that the Respondent first acquired the disputed domain name as recently as July 14, 2014, there is still no evidence showing that the Complainant’s trade mark had achieved any degree of fame by then and no reason for the Panel to think that the Respondent acquired the disputed domain name other than for its descriptive value.
The Complainant relies on its 1997 acquisition of the domain name qatarairways.com, the website of which promoted the DISCOVER QATAR trade mark, as predating the Respondent’s acquisition of the disputed domain name (which the Complainant assumed to have occurred in 2000). However, in the Panel’s view, the date that the Complainant acquired qatarairways.com is not of assistance here; what is potentially germane is the period of such promotion as well as its extent and reach. The Complainant has not stated exactly when the promotional content appeared on its website but its screenshot is dated October 12, 2014, after the (deemed) acquisition date of the disputed domain name, and there no information at all concerning the extent or reach of this content, such as website visitor / geo-location statistics.
In the Panel’s view, therefore, the Complaint falls well short of establishing “passive holding” as an indicator of bad faith.
The Panel would add that it does not find the Response entirely credible.
The Respondent relates the disputed domain name to an alleged mobile / web travel-related project dating back to as long ago as 2000 but without any explanation for the delay of some 15 years in launching the alleged venture and without a single supporting document.
The Respondent refers to various similar descriptive domain names allegedly owned by it but there is no evidence showing when those domain names were acquired or how they have been used. The Respondent vaguely alludes to various related entities but without explaining exactly who they are, or their roles, or how they are connected with each other. Then there is what can at best be described as a lack of clarity as to the registration history of the disputed domain name. All of this casts some doubt on the credibility of the Respondent’s assertions generally, including its alleged lack of knowledge of the Complainant’s mark until the Complaint was filed.
However, while both the Complaint and Response are lacking in supporting evidence, and unconvincing in certain respects, the Complainant has the burden of establishing each of the three elements required by paragraph 4(a) of the UDRP on the balance of probabilities. .
Taking all of the above matters into account, the Complainant has not satisfied the Panel on the balance of probabilities that the Respondent registered the disputed domain name by reference to the Complainant’s trade mark rather than for its descriptive value and, therefore, that the disputed domain name was registered in bad faith.
Reverse Domain Name Hijacking (“RDNH”)
The Panel declines to make a finding of RDNH in this case.
While the Complaint was indeed weak, there is nothing to suggest that, when it filed the Complaint, the Complainant knew or should have known that it could not prove one of the essential elements required by the UDRP or that the Complainant was out to harass the Respondent.
While the Complainant’s failure to disclose the cancellation of its US trademark No. 3,429,764 did give the Panel pause for thought, it is possible that this was due to inadvertence and, in any case, it is not in dispute that the Complainant’s Qatari trademarks are valid.