WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Qatar Airways Q.C.S.C v. Travelindex SA and Bernard Metzger
Case No. D2015-0327
1. The Parties
The Complainant is Qatar Airways Q.C.S.C of Doha, Qatar, represented by Talal Abu Ghazalah Legal (TAG-LEGAL), Egypt.
The Respondents are Travelindex SA of Victoria, Mahe, Seychelles and Bernard Metzger of Bangkok, Krung Thep, Thailand, self-represented.
2. The Domain Names and Registrar
The disputed domain names, <discoverqatar.org> (the “First Domain Name”) and <qatartourism.org> (the “Second Domain Name”) (together the “Domain Names”), are registered with Fabulous.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2015. On February 26, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On February 27, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 3, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 5, 2015.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 10, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 30, 2015. The Response was filed with the Center on March 29, 2015.
The Center appointed Tony Willoughby as the sole panelist in this matter on April 22, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The amendment to the Complaint was occasioned by the fact that the underlying registrant or registrants of the Domain Names were using a privacy service. On registrar verification it transpired that the underlying registrant of the First Domain Name was Travelindex SA and the underlying registrant of the Second Domain Name was Bernard Metzger. The Response was filed by Bernard Metzger on behalf of Travelindex SA. For the purposes of this decision the Panel treats Bernard Metzger and Travelindex SA as one and references to the Respondent are references to both of them.
4. Factual Background
The Complainant is a Qatari state-owned corporation, which was incorporated on November 30, 1993. It is Qatar’s national airline. Its stated objects include a range of activities from transport services to hotels, advertising, and tourism services.
It operates a website connected to its domain name, <qatarairways.com>, which was registered on May 22, 1997. On that website is a “Qatar Stopover” page featuring, inter alia, the following text under “Contact Us”:
“Contact Discover Qatar to start planning your Qatar Stopover” there is interposed a “Discover Qatar” logo under which appears “A division of Qatar Airways”. The text than continues: “What is Discover Qatar? Discover Qatar (DQ) is a Destination Management Company (DMC) under Qatar Airways Holidays to facilitate the development of Qatar as a tourist destination. DQ brings together accommodation, transport, tours and excursion suppliers together and ensures only quality Ground services to tour operators who want to feature Qatar as a destination.”
The Complainant has the “Discover Qatar” logo registered as a trade mark in Qatar under nos. 25691 and 25692 (registered November 22, 2004) in classes 16 and 39 respectively. It also had the logo registered in the United States of America (“U.S.”) under no. 3,429,764 (registered May 20, 2008) in the same classes, but as the Respondent pointed out (and the Panel has verified by visiting the United States Patent Trademark Office (“USPTO”) website) that registration was cancelled in December 2014 and has been replaced by a pending application filed on May 6, 2014 for the same mark (serial no. 82673604).
The description of the logo appearing on the USPTO record reads: “The mark consists of a square with a circle in the center of the square. The inner portion of the circle has stylized parallel horizontal lines and the profile of an Arabian Oryx. Below the square are the stacked terms ‘Discover’ and ‘Qatar’ and the Arabic characters which transliterate as ‘Discover Qatar'”. The record also indicates a disclaimer in relation to the word “Qatar” in English and Arabic. The Panel adds that the word “Qatar” appears in a significantly larger font than the word “discover”.
The Respondent (Travelindex SA) is a private company based in the Seychelles and engaged inter alia in the publication and management of travel directories and websites.
The First Domain Name was first registered on May 20, 2005. At one time it was connected to its own dedicated website, but it now resolves to a website connected to the Second Domain Name. The Second Domain Name was registered on May 16, 2014 and is connected to a website, which on its face appears to be a tourism site devoted primarily to Qatar. However, many of the directory functions listed down the left hand side of the homepage are not functional, merely throwing up a generic form to be completed by the visitor, or in the case of the “video” function, leading to several pages of hotel, airline, embassy, and other business listings, but no videos. The homepage features a slogan reading “Qatar – Discover the Spirit” in a font and colour reminiscent of the manner in which “Qatar Airways” appears in a similar position on the homepage of the Complainant’s website. From time to time the website connected to the Second Domain Name has featured a banner advertisement for the Complainant’s airline.
5. Parties’ Contentions
The Complainant contends that the First Domain Name is identical or confusingly similar to its DISCOVER QATAR trade mark, but makes no such claim in relation to the Second Domain Name. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Names, none of the provisions of paragraph 4(c) of the Policy being applicable. Finally, the Complainant contends that the Domain Names were registered and are being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Respondent denies the Complainant’s allegations. It asserts that its online publication of travel directories is not an activity covered by any of the Complainant’s trade mark registrations. It denies that it has ever used the Complainant’s DISCOVER QATARtrade mark and states that it derives no financial profit from the website connected to the First Domain Name, all the links being free and not linking to any affiliate or booking sites.
The Respondent points to other similar websites/domain names that it manages on a similar basis involving Singapore, Thailand, and South Africa.
The Respondent is planning to “compile an exhaustive travel guide on Qatar”, which it will publish on a website connected to the First Domain Name, which is why, having acquired the Second Domain Name, it moved its travel directory site from the First Domain Name to the Second Domain Name.
Broadly, the Respondent’s position is that the Complainant’s trade mark does not cover what the Respondent is doing and the Complainant and the Respondent are in “totally different activity fields and not competing in any way.”
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove that:
(i) The Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names have been registered in bad faith and are being used in bad faith.
B. Identical or Confusingly Similar
The Complainant relies upon its DISCOVER QATAR logo device mark registered in Qatar. The claimed U.S. trade mark has been cancelled and the Panel therefore ignores the claim. It is surprising to the Panel that it was left to the Respondent to point out the true state of affairs (see section 4 above).
As the Respondent has also correctly pointed out, the Complaint contains no claim that the Second Domain Name is identical or confusingly similar to the Complainant’s trade mark and the Panel can see no way in which anyone could credibly claim that <qatartourism.org> is identical or confusingly similar to the Complainant’s logo device. Since the requirement under the Policy is that all three elements of paragraph 4(a) be proved, the Complaint in respect of the Second Domain Name fails.
The First Domain Name comprises the words “discover” and “Qatar” and the generic “.org” Top Level Domain Identifier. It being permissible for panels to ignore the Top Level Domain Identifier where, as here, it does not affect or dilute the distinctiveness of the Domain Name at the second level; the assessment of identity or confusing similarity is of “Discover Qatar” on the one hand and on the other hand the Complainant’s logo device featuring the words “Discover Qatar”, “Qatar” very prominently, “Discover” less prominently.
“Discover Qatar” is a highly descriptive term and one that the Panel can imagine many people engaged in the tourism industry might wish to use purely for its descriptive value. Moreover, the Complainant’s logo device is a complex device. Certainly there is no identity, but is there confusing similarity?
On the basis that (a) this test under paragraph 4(a)(i) of the Policy is recognized to be a low-level test designed primarily to establish that the Complainant has a bona fide basis for filing the Complaint; and (b) the words “Discover Qatar” feature reasonably prominently in the Complainant’s trade mark, the Panel finds that the First Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
C. Rights or Legitimate Interests
In light of the Panel’s finding in D below, it is unnecessary for the Panel to address this element of the Policy.
D. Registered and Used in Bad Faith
The Complainant contends that the First Domain Name was registered and is being used in bad faith for the following reasons:
(a) the Complainant’s DISCOVER QATAR trade mark is very well-known worldwide and the Respondent must have been aware of it when registering the First Domain Name;
(b) the Respondent is using the First Domain Name for affiliate marketing and that is bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy;
(c) the only active facilities on the Respondent’s website are online travel services and hotel bookings, which are services offered by the Complainant. The rest of the purported services offered are fake. The Panel takes this to be a reference to the matter of the non-functional services described in the final paragraph of section 4 above.
(d) “The Respondent is using the Complainant’s trade mark design, logo, colour, company name and activity.” “The Respondent is using the Complainant’s company name ‘Qatar Airways’ beside the same logo of the complainant’s design, colour, trade mark and activities to create a connection that the disputed domain name ‘www.discoverqatar.org’ alias ‘www.qatartourism.org’ is related to the Complainant’s company and to take unfair advantage of its trade mark ‘Discover Qatar’ and hence misleading the users.”
In essence, the Complainant’s contention is that the Respondent registered the First Domain Name with knowledge of the Complainant’s trade mark and with the intention of diverting Internet users for commercial gain within the meaning of paragraph 4(b)(iv) of the Policy.
The Respondent states that it is an online publishing company, well known in its field. It states that all its listings on its websites are free and never link to third parties or any affiliate sites. The evidence filed by the Respondent is sufficient to establish to the satisfaction of the Panel that the Respondent does in fact operate a genuine online publishing business in the travel/tourism field.
The Respondent claims to have published an online travel directory on Qatar connected to the First Domain Name since August 8, 2011 and produces an Internet Archive WayBackMachine webpage in support of the claim. It denies that the Complainant’s DISCOVER QATAR trade mark is a well-known trade mark and it denies that it uses that trade mark. It also denies that it provides any of the services such as hotel bookings and travel services that the Complainant asserts that it provides.
Having acquired the Second Domain Name, the Respondent forwarded its website to that Domain Name, reserving the First Domain Name for a destination travel guide on Qatar, which it is currently developing.
A key to success under this element of the Policy is to establish to the satisfaction of the Panel that when the Respondent registered the Domain Name, it was aware of the Complainant and its trade mark and registered the First Domain Name with bad faith intent, namely to disrupt the Complainant’s business in some way or to take unfair advantage of the Complainant’s trade mark.
When did the Respondent register the First Domain Name? The Registrar’s WhoIs database indicates that the First Domain Name was “created” on May 20, 2005, but on Registrar verification, in response to a question from the Center as to when the Respondent first acquired the First Domain Name, the Registrar replied “Unsure as to the exact date”. Accordingly, the earliest that the Respondent could have done so was on May 20, 2005. The Respondent does not say when it acquired it. It merely acknowledges first use on August 8, 2011.
Whatever the precise date that the Respondent acquired the First Domain Name, the Complainant’s DISCOVER QATARtrade mark registration (November 22, 2004) predates it. When was the Respondent likely to have become aware of it? The Complainant contends that the trade mark is a well-known trade mark, but when did it become well-known? There is no evidence before the Panel to assist in answering that question. The evidence of the Complainant’s use of the DISCOVER QATAR trade mark is limited to two invoices featuring the device for hotel accommodation and tourism services dating back to 2005 and four Qatar Airways posters/advertisements also featuring the device (two undated and the others dated 2008, 2012, and 2014 respectively). No indication is given as to the extent of its use.
In this section of the Complaint the Complainant cites two previous cases where the trade marks concerned were held to be well known. One of them concerned the trade mark CARREFOUR, which the panel found on the evidence to be one of the largest retailers in the world, and the other concerned inter alia the trade mark MICHELIN. These trade marks are in an entirely different category from the Complainant’s DISCOVER QATAR trade mark. While the Panel would have no difficulty in acknowledging that QATAR AIRWAYS is a well-known trade mark, the Panel would have required much more in the way of evidence to support the claim that the DISCOVER QATAR trade mark was a well-known mark in the period 2005-2011, when the Respondent acquired the First Domain Name.
As indicated above, the Complainant claims that “[t]he Respondent is using the Complainant’s, trade mark design, logo, colour, company name and activity” and cites two annexes, which are said to support the claim, both being screenshots of the Respondent’s website. The Respondent denies the claim. The first of those screenshots (dated January 13, 2015) features a banner advertisement for Qatar Airways and the Qatar Airways logo. There is no sign of the DISCOVER QATAR trade mark. The second of those screenshots (undated) features no reference to the Complainant, its airline, or the DISCOVER QATAR trade mark.
The Panel acknowledges that the first of those screenshots featuring the Qatar Airways banner advertisement and the Respondent’s “Qatar – Discover the Spirit” slogan in a very similar font and livery renders the page potentially deceptive. It looks to the Panel like an official webpage of the Complainant and, depending upon the extent to which the appearance of the banner advertisement can be laid at the door of the Respondent, may well support a claim to use in bad faith. However, it is irrelevant to the immediate issue to be addressed in that it is dated January 13, 2015. It does not help to identify the Respondent’s state of mind at the time of acquisition of the First Domain Name.
Even if the Respondent was aware of the existence of the Complainant’s “Discover Qatar” logo at the date of acquisition of the First Domain Name (a matter on which the Panel is far from persuaded), might the Respondent nonetheless have reasonably taken the view that an ornate complex device of the kind in question, the most prominent elements of which are (i) the artistic design surrounding the head of the Arabian oryx and (ii) the word “Qatar”, could not conceivably give rise to exclusive rights to the descriptive term “discover Qatar”?
While the Panel notes that there are aspects of the Respondent’s website which indicate that it is not fully functional and which the Complainant rates as “fake”, the Panel is not persuaded that this is indicative of bad faith intent at the time of registration of the First Domain Name. The Panel is not persuaded on the evidence presented that the First Domain Name was registered in bad faith.
For the foregoing reasons, the Complaint is denied.
Date: April 29, 2015