Qatar’s Tourism Council launched a fight over a domain name, and now it needs to defend itself in U.S. Court.
A man from Azerbaijan is suing the Qatar National Tourism Council—in Colorado.
Teymur Mehdiyev filed a lawsuit (pdf) in U.S. District Court, District of Colorado, after the World Intellectual Property Organization (WIPO) ordered that his domain VisitQatar.com be transferred to the tourism council.
The WIPO panel made this decision despite Mehdiyev having a registered trademark in the U.S. for “Visit Qatar”.
By filing the lawsuit, the domain name transfer will be stayed pending the outcome of the suit.
So why Colorado? When the tourism council filed the dispute, it agreed to submit to the jurisdiction where the domain name registrar is located. The domain name is registered with Name.com, a company in Denver.
Mehdiyev is asking the court to declare that his ownership of VisitQatar.com does not constitute cybersquatting. He’s also asking for a finding of reverse domain name hijacking, which comes with a penalty as high as $100,000.
Now, Qatar’s tourism council must defend itself in U.S. court or it might find itself on the wrong end of a judgment.
This is a Cyber Monday biggest free gift to the domain name investment community.
David Michaels says
This is an interesting case and it’s quite similar to my SesameSnaps.com case.
The key points in Teymur Mehdiyev’s Complaint state:
16. In response to the refusal of its trademark registration application, the Defendant conceded the descriptiveness of its claimed mark, and amended its application to the Supplemental Register of the USPTO. The application then proceeded to issue as Supplemental Registration No. 5,471,711.
20. In the UDRP Complaint, the Defendant claimed to have trade or service mark rights in the geographic term “QATAR”.
21. Notwithstanding the fact that Plaintiff owns a US trademark registration on the Principal Register corresponding to the domain name, notwithstanding the USPTO’s refusal to register the Defendant’s “QATAR” mark on the Principal Register, and notwithstanding the Defendant conceding the merely descriptive nature of “Qatar” in its claimed mark, the Defendant alleged that the domain name was confusingly similar to a mark in which the Defendant claims to own rights
SECOND CAUSE OF ACTION – REVERSE DOMAIN HI-JACKING
UNDER 15 U.S.C. § 1114(2)(D)(iv)-(v)
38. Plaintiff’s Domain Name has been locked beyond Plaintiff’s full enjoyment of the benefits of registration thereof in consequence of false statements made by Defendant under a dispute policy (the UDRP) followed by the domain registrar Name.com LLC.
39. Knowing its allegations were not “complete and accurate,” Defendant certified otherwise in its UDRP complaint, and claimed that the Plaintiff had “registered and used [the domain names] in bad faith” relative to the Defendant’s alleged rights for the purpose of depriving the Plaintiff of its
rights under the domain registration contract.
And I like the THIRD CAUSE OF ACTION: TORTIOUS INTERFERENCE
47. Defendant’s misrepresentations in the UDRP Complaint were knowingly made for the purpose of inducing cancellation of Plaintiff’s domain registration contract with Name.com LLC, and to deprive Plaintiff of the benefits of its registration contract with Name.com LLC.
He should also add Wipo as a co-defendant for gross negligence.
Yes for sure. About time.
Robert Monster says
Big fan of Teymur, after recently working with him on a transaction. The Epik team wishes him and counsel good luck. This is definitely one where some important precedent is being set. Lose the battle. Win the war.
As for WIPO’s UDRP process, after a continuing pattern of overreach and blatant abuse of registrants, I have to conclude that their era of serving as “small claims court for domains” is coming to an end. Pity.
Bob Decker says
They can buy QatarsFinest.com for a million!
Ali G says
This question does not relate specifically to the case being discussed, but the case does shine a light on the question…
Unlike the circumstances some ‘centuries’ ago when all we had was dot.com, net and org, we now have hundreds of extensions, and the use of domain names has become ubiquitous and mundane, used as a mere connectors to digital addresses, not unlike #hashtags.
Except in the situation when a word or phrase has become inherently distinctive or has acquired secondary meaning, when does the use of a domainname.blah (or visitqatar.boogie) rise to the level of being a dilutor of a mark, or cause confusion in the mind of consumers…..
I think the time has come for us to rethink the idea that domain names necessarily have massive and overpowering reach into the minds of consumers, and to question the assumption that because some word or phrase is used as a digital address it suddenly becomes a threat to a mark.
Very good news, and now I pray, InshaAllah, that he wins the Case and gives these stingy Qatari’s a good legal hiding. It just shows how many, not all, wealthy people, are much less generous than someone with very little money.Shame on them.
Ahmed ALSHIWASH says
Are you serious!. I have a court against Coca-Cola. They didn’t really have the right for the domain, however with 5 lawyers against me. (a refugee still, I don’t have that money to pay a lawyer).
I also have other 2 courts with 9 billion companies revenue from France and USA. Both of them refused to pay me $500.
The greedy companies in Europe, Canada and USA are so much more than all of the Arabic countries.
Send me the details and I find you a lawyer perhaps no win no fee, depends on the Case
the rich country of Qatar can not afford to BUY a domain name ?
Looking forward to the news that the “country” of Qatar is a “Domain Name Hijacker”.
Would be nice to see them featured at:
Original judgement taking other people’s domain away was totally senseless. Dont know where these panelists went to school. Speechless.
Allowing someone else’s domain ownership under judgement is simply rude and total bs in the first place. They should take and register the name themselves in the first place if they like it so much. All these judges and panelists things existed to create activities and chances to make money. Look down on them.
Rubens Kuhl says
The real fun begins if Qatar Tourism tries to assert sovereign immunity.
I am sure they asked for a quote, probably got some crazy quote of like $50M, and they moved on with this.
The domain is best in the hands of the local tourism board, so these 2 should find a way to find common ground. The domain in such a situation is probably worth about 6 figures. I don’t see people lining up to visit Qatar, especially after their borders were locked down.
Shakespeare said it well regarding the UDRP, “the most unkindest Qatar of all.”
Guest user says
Is Colorado the best state for domain owners to defend their domains? If not, which? I know this is an old article but I’m hoping someone can respond since I’m not familiar with what state offers the best laws
Andrew Allemann says
This person only chose Colorado because that’s where the domain name registrar was based. The Qatar Tourism Council agreed to submit to jurisdiction in Colorado when it filed its UDRP.