Judge agrees that owner of VisitQatar.com is not cybersquatting.
United States District Judge Daniel D. Domenico has ruled in favor (pdf) of the owner of VisitQatar.com in a cybersquatting suit.
The decision to rule in favor of Mehiyev in court was easier than the complicated UDRP because of a key difference between UDRP and the Anticybersquatting Consumer Protection Act (ACPA).
Someone registered VisitQatar.com in 2004, and Mehiyev acquired the domain name in 2016. Qatar National Tourism Council began developing a trademark for Visit Qatar in 2015, between the registration date and Mehiyev’s acquisition.
UDRP panelists usually consider the date of the current owner’s acquisition of the domain when determining if it was registered in bad faith. While some courts haven’t settled the matter, most consider the original registration date the key date for determining if a domain registration is cybersquatting. In this case, what matters is that 2004 is before the tourism council began using the term as a trademark in 2015.
In making his ruling, Judge Domenico compared a domain name acquisition to a real estate:
There is no dispute here that Mr. Mehdiyev’s predecessor registered prior to the Council’s mark becoming distinctive, and was thus not cybersquatting. And there is no dispute that Mr. Mehdiyev legally acquired the predecessor’s legal interest in the domain. Acquiring another’s legal interest in property (intellectual or otherwise) is not squatting…
…And this raises a final policy point. While § 1125(d)’s obvious purpose is to prevent cybersquatting, it also helps provide those who own or are developing potentially distinctive marks an incentive to either choose marks that are not similar to domains that are already registered, or, perhaps, to purchase those domains before they expend significant goodwill creating their similar marks. Allowing a mark owner to undo an otherwise valid, pre-existing registration by calling it cybersquatting would be akin to building a house on land subject to another’s lien and calling the lienholder a squatter. The incentives created by allowing that possibility undermine the broader purposes of the Act, and are not necessary to prevent true cybersquatting.