It was a very complicated case.
Qatar National Tourism Council has won a UDRP it filed against the domain name VisitQatar.com.
It’s a mind-numbing case. The discussion of the first prong of UDRP, whether or not the domain is identical or confusingly similar to a mark in which the Complainant has rights, clocks in at a whopping 4,842 words!
The owner of the domain is in Azerbaijan. He created a simple travel booking website on VisitQatar.com. He also obtained a U.S. trademark for “Visit Qatar”.
Despite this, the three-person panel determined that the Respondent registered the domain to target the Complainant and all of his activities were just a ruse. It questioned his credibility and wrote:
Taking all of this as a whole, the Panel reaches the conclusion the Respondent registered the Disputed Domain Name with a view to selling it at a substantial profit to the body responsible for promoting tourism in Qatar and which was already active under the “visitqatar” term on social media. He then proceeded cautiously and set about putting in place measures to legitimize the Disputed Domain Name and defend any UDRP proceeding. These included linking the Disputed Domain Name to a working (but rudimentary) travel related website and seeking a US trademark registration…
The three-person panel found in favor of the tourism agency.
If the UDRP was designed to handle clear cases of cybersquatting, this case was anything but.
It’s a rare loss for domain attorney John Berryhill, who represented the Respondent.
Rob Monster - Epik.com says
Terrible decision. Condolences to John Berryhill and the registrant. This is a generic “Visit + Destination”. It does not matter that the registrant was going to re-sell it to someone in travel or tourism. Looks like thuggery.
Robert McLean says
hear hear Mr. Monster!
Terrible decision. Theft of a great name.
Link in your post seems to be broken.. At leas for me.
Andrew Allemann says
fixed the link
IS he going to issue Proceedings in USA now to get the decision reversed ?.
So the fact he had a Trademark means nothing to them ? . I had the same type of innuendo from the Panelist ,even though I had a TM, but at least they ended up ruling for me. Really it shows the whole biased approach of the UDRP system, AGAIN.
Having now skim read the UDRP decision, which is lengthy, I can really see only a ,lot of waffle in regards to Complainants rights. IF now a Respondent WITH a Trademark can lose a domain then what protection is there left ?. None by looks of it. Really I do hope this goes to Court and maybe someone will assist for their benefit as well in long run.
What right does WIPO have to question the respondent’s USPTO Federal Trademark rights and rule against him?
He met the burden of obtaining a USPTO Federal Trademark, and that should have been enough to defeat this clear reverse hijacking!
I cannot believe Adam Taylor was involved in this ATROCIOUS decision ,really ?.
Russian Troll says
The weirdest part is here:
How can anyone get a trademark on a country name? Countries do regulate usage of their names internally, but unless there is no abuse which may lead to political consequences, any foreign person or entity should be able to open and run a Chinese restaurant, a Thai spa, a German cars dealership, or blame it on Russian trolls.
You can get a TM for virtually any word, depends what Class of Goods & services. i.e. you could NOT get ,say, “CAR MECHANIC” TM for Auto Repairs , BUT you could Get “CAR MECHANIC” as TM for say Supplying Bananas. If you get the idea of how it works.
John UK says
I see that Bird & Bird represented the Complainant. Well I gave Bird & Bird / their Client a trouncing in Court after a UDRP decision went against me, and was given the domain back (Essque.com) . So you see, they can be beaten ,you just have to be unbending and tenacious.
this will open a can of warms AGAINST trademark-holders as well.
The country of Qatar does not hold a trademark for the term “Visit Qatar”.
The domain-owner indeed holds a trademark for the term “Visit Qatar”.
the domain-extension for the country of Qatar is not “.com” but “.qa”
The country surely has a right to own the domain “VisitQatar.qa” but I doubt they do have any rights to the domain “VisitQatar.com”
John UK says
If the Respondent/JohnBerryhill do not Appeal this to the Courts it will be very bad. Does anyone know if they are ?
No sane person is going to visit the country of Qatar anyway.
They are just a bunch of crazy head-choppers and war-mongerer.
andrew senowe says
I’ve actually been holding back myself, but ever since this blog post even appeared I’ve been on the edge of saying something the whole time too. I will say it separately from “Frank” here, however.
No doubt some people can visit a place like Qatar and remain perfectly fine, have a good time, and even be shown a good time (think especially if they are considered to be “important”). However, and this may be considered “politically incorrect” or “xenophobic” in some sense with some people, (some very naive people who also tend to have a “charmed life” and/or be considered in a place like that to be an “important” visitor, that is), personally I would never go there even if “they” even wanted to pay me to do so. Especially if they wanted to pay me to do so and even pay me handsomely in fact.
Are you one of these people who can go there with a “charmed life” and be considered “important,” by the way? Wake up and realize that if you don’t recognize the reality and validity of such concerns you are simply naive, deluded, and more – and you have a “charmed life.”
And I’m not singling out the MENA region either in case anyone is wondering, by the way. There are a number of interesting places that I would be immeasurably more reluctant to visit now than say 20 years ago perhaps too. Even a place like London.
And on that note, though not related to male visitors in this case, check out the first few pages or so of the SE results here:
John UK says
John, yes I agree on same basis. I have visited, and loved, the USA many many times over past 35 years and loved it. NY to LA to FLA and up to NY great. But now I am hesitant as World has changed on both sides Atlantic. Shame really but hey ho thats how it is.
So who owns/operates Qatar.qa?
And what does this mean for the owner of Qatar.com since the Complainant has a UDRP precedent in it’s favor for VisitQatar.com?
Currently Qatar.com shows an error page.
I wonder how much $$$ the country of Qatar paid to the “Panelists” ?
100% sure all three panelists received bribe money from Qatar. That was how they got right to host the next World Cup in the desert.
According to the complaint, the Complainant was well aware that the respondent held a USPTO Federal Trademark.
So why didn’t they oppose or pursue a cancellation of the respondent’s Trademark as a prerequisite to their attempted hijacking? Why did the complainant feel it is privileged to skip this important step when trying to steal this domain?
The Respondent’s USPTO Federal Trademark should have been a barrier to any attempted hijacking by the complainant.
Wipo should have dismissed this case on this fact alone and ruled that it was an RDNH Reverse Hijacking as a general rule whenever any Respondent holds an active Formal Trademark.
this case shows everyone that WIPO and UDRP’s are just a joke.
UDRP’s are a scam run by greedy and corrupt lawyers.