Qatar Airways once again fails to 'discover Qatar'
The complainant is a Qatari state-owned corporation and Qatar's national airline company, participating in a range of activities from transport services to hotels, advertising and tourism services. In April 2015 it had already lost a case under the UDRP relating to the two domain names ‘discoverqatar.org’ and ‘qatartourism.org’ (Qatar Airways QCSC v Travelindex SA (WIPO Case No D2015-0327)).
In the case at hand, the complainant attempted to recover the domain name ‘discoverqatar.com’, registered by the respondent, Intelev, a start-up company that claimed to be in the business of assisting travellers to make customised travel plans based on their unique social profiles taken from online social network data.
The disputed domain was created on July 27 2000. According to the registrar, it had been registered to the respondent since “at least” July 14 2014. There was no evidence that the domain name had been used for an active website.
To be successful in a complaint under the UDRP, a complainant must satisfy the following three requirements set out at Paragraph 4(a):
- the domain name is identical, or confusingly similar, to a trademark or service mark in which the complainant has rights;
- the respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name has been registered and is being used in bad faith.
As far as the first limb was concerned, the complainant considered that the term ‘discoverqatar’ was protected by a US trademark and two Qatari trademarks. The panel disregarded the complainant’s US trademark as this had been cancelled. However, the panel considered that the disputed domain name was confusingly similar to the complainant's Qatari trademarks, the textual component of which consisted of the term ‘Discover Qatar’ - both in English and transliterated into Arabic. The panel therefore found that the complainant had established the first element of Paragraph 4(a) of the UDRP.
Turning to the second limb of Paragraph 4(a), the panel underlined that it was usually an impossible task for a complainant to prove a negative (as this required information that was often primarily within the knowledge of the respondent) and so the burden of proof shifted to the respondent to come forward with appropriate allegations or evidence, once the complainant had made out a prima facie case that the respondent lacked rights or legitimate interests.
In this case, the respondent claimed that it had been preparing to use the disputed domain name for many years, but had refused to provide any evidence without signature of a non-disclosure agreement. The panel considered that the respondent should have been able to provide at least some non-confidential evidence sufficient to show that it had made some efforts toward a website at the disputed domain name over the period of 15 years since it had been registered (although it was unclear when exactly the domain name was acquired by the respondent), but it had not. The panel therefore concluded that the respondent had no rights or legitimate interests in the disputed domain name, and thus the complainant had succeeded in establishing the second element of Paragraph 4(a) of the UDRP.
However, regarding the third limb in relation to registration and use of the domain name in bad faith, the panel considered the principles of "passive holding" (as examined in Telstra Corporation Limited v Nuclear Marshmallows (WIPO Case No D2000-0003)) and whether this could amount to bad faith, given that the respondent was not using the domain name. In Telstra, the panel gave close attention to all the circumstances of the respondent's behaviour, not just whether the respondent was undertaking a positive action in bad faith in relation to the domain name.
Here, the panel considered that the term ‘Discover Qatar’ was highly descriptive, and this was the main obstacle to a finding of passive holding as an indicator of bad faith. The respondent pointed out that the panel in the earlier ‘discoverqatar.org’ decision had found that the term ‘Discover Qatar’ was highly descriptive and that many people in the tourism industry may want to use for its descriptive value. The respondent claimed not to have been aware of the complainant's DISCOVER QATAR trademark before being served with the complaint.
Indeed, whilst the complainant claimed that its DISCOVER QATAR mark was “internationally well known”, the panel found that this was not borne out by the supporting evidence supplied with the complaint, which consisted only of the ‘Qatar Stopover’ page on its website at ‘www.qatarairways.com’ as of October 12 2014, 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.
The complainant relied on its 1997 acquisition of the domain name ‘qatarairways.com’, the website of which promoted the DISCOVER QATAR trademark, as predating the respondent’s acquisition of the disputed domain name. However, in the panel’s view the date that the complainant acquired ‘qatarairways.com’ was not of assistance. What was potentially relevant was the period of such promotion as well as its extent and reach. The complainant did not state exactly when the promotional content appeared on its website, but the screenshot supplied was dated October 12 2014, which was after the latest possible acquisition date of the disputed domain name, and there was no information at all concerning the extent or reach of this content, such as website visitor and/or geo-location statistics. Thus, there was no evidence that the respondent had acquired the domain name other than for its descriptive value.
Having said this, the panel noted that it did not find the response entirely credible, as there was a lack of clarity as to the registration history of the domain name, and no explanation for the delay in use or supporting evidence of this. However, it was the complainant who had the burden of proving each of the three elements required by the UDRP on the balance of probabilities. In this instance, the complainant had not satisfied the panel that the respondent had registered and used the disputed domain name by reference to the complainant's trademark value (as opposed to its descriptive value) and thus in bad faith. The panel therefore denied the complaint.
Finally, the panel declined to make a finding of ‘reverse domain name highjacking’ (which consists of filling a complaint in bad faith to harass the domain name holder), as requested by the respondent. In the panel's opinion, there was nothing in this case to suggest that the complainant knew or should have known that it could not prove one of the essential elements required by the UDRP, or had intended to harass the respondent. It was possible that the complainant's failure to disclose the cancellation of its US trademark was down to inadvertence, and in any case its Qatari trademarks were valid.
David Taylor and Jane Seager, Hogan Lovells LLP, Paris
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