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Qatar tourism council wins VisitQatar.com in cybersquatting dispute

by — Policy & Law 23 Comments

It was a very complicated case.

Picture of Doha, Qatar skyline

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.

HBO wins TrueDetective.com domain name in cybersquatting fight

by — Policy & Law 11 Comments

HBO gets domain name for popular series.

Promotional picture for True Detective TV show featuring detective in backgroundIt didn’t take gritty police work to solve a case over the domain name TrueDetective.com.

HBO has won a cybersquatting dispute over the domain name for its popular True Detective show.

The company filed a complaint with National Arbitration Forum under the Uniform Domain Name Dispute Resolution Policy, arguing that the owner of the domain was cybersquatting.

A National Arbitration Forum panelist came to an easy decision in favor of HBO. A parked page at TrueDetective.com includes ad links for “HBO True Detective” and “HBOGO”. The owner of the domain didn’t bother to respond to the allegations, either.

True Detective has aired for three seasons and featured stars including Matthew McConaughey, Woody Harrelson, Colin Farrell, and Vince Vaughn.

Fabricio Vayra of Perkins Coie LLP represented HBO.

When is RDNH not RDNH?

by — Policy & Law 1 Comment

Answer: when the UDRP panelist fails to address it.

Tub of "I can't believe it's not butter" with RDNH replacing the word butterSome cybersquatting cases under the Uniform Domain Name Dispute Resolution Policy (UDRP) are bad. Some are so egregious that you wonder how much research the Complainant did before fiing the case.

Such is the case with a recent dispute over Duggan.com.

The Complainant, who was represented by counsel, argued that Thomas Duggan was cybersquatting with the domain name he registered in 1995 because:

  • Complainant has also been forced to register the duggan.cc domain name because the .com was taken.
  • Respondent’s only use of the Domain Name was to maintain an email address.
  • Respondent failed to enter into negotiations to sell the domain to Complainant.

I’m not kidding. These are all stated in the panelist’s UDRP decision.

Obviously, the panelist did not find that the domain was registered and used in bad faith.

What’s unfortunate is that panelist Nicolas Smith did not consider reverse domain name hijacking (RDNH). Thomas Duggan had to take the time to defend his domain name against a case that had no chance of succeeding under UDRP.

I doubt that the Respondent asked for RDNH, but a panelist should always consider it when the Respondent prevails in a case.

 

Trivago argument falls way short in cybersquatting complaint

by — Policy & Law 3 Comments

Would you confuse Traveltrow with Trivago?

Logo for travel site TrivagoTravel company Trivago (NASDAQ: TRVG) has lost a cybersquatting case in which the panelist said it was “not really a close call.”

Trivago filed the complaint against the owner of Traveltrow.com, arguing that Traveltrow was confusingly similar to Trivago.

That’s not a typo: Trivago vs. Traveltrow.

Here’s how Trivago tried to convince the World Intellectual Property Organization panelist:

Complainant argues, first and foremost, that the TRIVAGO mark and the Domain Name both have three syllables (one disregards the “.com” generic Top-Level Domain). Complainant then notes that the last syllable of the Domain Name (“trow”), rhymes with the last syllable of the mark (“go”). Complainant notes that the first syllable of the mark and the Domain Name begins with the letters “tr,” and that the second syllable of both begins with the letter “v.”

Panelist Robert Badgley wasn’t buying it.

It appears that the owner of Traveltrow.com might be infringing on Trivago’s trademark rights with content hosted at the domain name. But Badgley notes that is beyond the scope of UDRP:

It may well be that Complainant has a valid trademark infringement or unfair competition cause of action against Respondent in a court of law. The UDRP, however, is focused on abusive domain name registration and use, not more generally with infringing conduct across the Internet. As such, if a domain name is not confusingly similar to the complainant’s trademark, the case is over, regardless of whether the respondent is a bad actor.

Metamark misses the mark

by — Policy & Law 4 Comments

Talk to a lawyer before filing a UDRP.

Drawing of man shooting an arrow in the opposite direction of a target

Many people don’t understand what cybersquatting is. They think that anyone not using a domain name they want is cybersquatting.

But they read up on it. Maybe talk to a lawyer. Then they understand there’s more to it than that.

So it’s surprising that a UK company went forward with a cybersquatting dispute that shows it believes the common misconceptions about cybersquatting.

Metamark Limited in the UK filed a dispute against Metamark.com, owned by US company Metamark Corporation.

The UK company uses the domain name Metamark.co.uk to sells is signage materials. It tried to buy the domain and failed, so it filed a UDRP.

And its filing was a terrible one. It lost on all three (yes, three) counts that it needed to prove.

The first prong of UDRP is easy. All the Complainant has to show is that the domain is confusingly similar to a mark in which it has rights. It could have easily shown this by providing some proof that it has common law rights in the name Metamark.

Instead, it referred to a registered trademark the company has for Metaglide.

Huh? Panelist Neil Anthony Brown was just as confused by this as I am. He found that Metamark failed the first prong of UDRP.

Then it failed to make a prima facie case that the domain owner lacks rights or legitimate interests in the domain. Instead, it submitted, “Offers have been made to buy the domain name via TUCOWs and its affiliated companies.”

Metamark’s case for registration and use in bad faith was similarly offbase:

Not a trading or active site. -No legal or trademarked claim on the name of Metamark- Solely being held for a future profit or financial gain.

Never mind that the current owner of the domain registered it in 1997, well before Metamark’s claimed trademark rights (in Metaglide, no less).

The owner of the domain didn’t respond to the dispute.

It appears that Metamark was represented by the company’s CFO. Next time, it should talk to a lawyer.