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.
Qatar National Tourism Council won a UDRP against Teymur Mehdiyev, the owner of the domain name, in 2019. It was a complicated case and Mehdiyev filed a lawsuit to stay the transfer.
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.
Good decision and thanks for sharing.
You may want to fix the typo Qater to Qatar.
John Berryhill says
They accused him of being a CybersQatar!
Andrew Allemann says
Thanks for catching that.
Isn’t this kind of a clear precedent now? We had the “Go Pets” ACPA ruling, and we now seem have this too.
So the original creation date matters is what this decision clearly supports. Quite interesting for “Pre-Release” type domains as apposed to “Pending Delete” since the Pre-Release domains preserve their original creation date.
So does this mean that if we cite to this case in a UDRP response, then doesn’t the panel have to abide by that?
I suspect a panel may not be obligated to abide by it, but this should indeed be mentioned in the defense of a domain in similar situation, and it may serve to nudge the panel to take it into account. But since there is no recourse in the UDRP for challenging decisions except in courts, I suspect panels will continue to consider date of current owner’s purchase as the date for the consideration of bad faith registration since there are a ton of precedents in the UDRP system. But this does indeed help serve as precedent to those who are willing/able to go to court to overturn a bad decision.
Jon Schultz says
Thanks for reporting, but does a U.S. court have the power to order the Qatar National Tourism Council to transfer the domain back to Mehdiyev? What happens if they refuse?
The lawsuit he filed prevented the transfer, so he still owns it.
Jon Schultz says
Got it, thanks!
Gene Downs says
Good to see the domain returned to the rightful owner, it’s long over due that business people do business in a business like manner & negotiate with the owner – Great Post thank you
Bill Roy says
The Judge’s decision is based on logic and reasonableness (how we all wish that more cases decided thus).
TradeMarks are their to ‘protect’ not to help the holders to steal or weasel other peoples or companies rights and possessions. This judgement ruling should now be applied to all UDRP cases.
David Michaels says
The Plaintiff in the Visit Qatar trademark and ACPA case is looking for a pro bono attorney who is comfortable with conducting depositions and motions for summary judgment.
The Plaintiff already won the ACPA portion of the case regarding his visitqatar .com domain name.
The balance of the case deals with counter claims for trademark infringement and cancellation of the Plaintiff’s US trademark in the US Dist. Court of Colorado.
The prior counsel had scheduled the depositions for 9 and 11 August, 2021, but those dates may be changed. The Plaintiff ran out of money and needs a probono attorney.
Let me know if you are interested so that I can connect you with him over WhatsApp and email. The Plaintiff lives in Azerbaijan
This case will get you some publicity as it is being watched by many domain name investors.