WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Qatar Airways Q.C.S.C. v. Domain Admin / Ram Nekkanti, Intelev
Case No. D2015-0798
1. The Parties
The Complainant is Qatar Airways Q.C.S.C. of Doha, Qatar, represented by Talal Abu Ghazaleh Legal, Egypt.
The Respondent is Domain Admin of Berkeley, California, United States of America / Ram Nekkanti, Intelev of Berkeley, California, United States of America (“US”) self-represented.
2. The Domain Name and Registrar
The disputed domain name <discoverqatar.com> is registered with GoDaddy.com, LLC. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2015. On May 6, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 7, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 May 15, 2015. On June 2, 2015 the Respondent filed a request for deadline extension. On June 3, 2015 the Center granted the Respondent an extension of seven days to file its response. The due date for Response was June 11, 2015. The Response was filed with the Center on June 11, 2015.
The Center appointed Adam Taylor as the sole panelist in this matter on June 23, 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.
4. Factual Background
The Complainant, which was incorporated on November 30, 1993, is a Qatari state-owned corporation and Qatar’s national airline. Its stated objects include a range of activities from transport services to hotels, advertising and tourism services.
The Complainant registered a DISCOVER QATAR logo as a trade mark in Qatar under nos. 25691 and 25692 (registered November 22, 2004) in classes 16 and 39 respectively.
The Complainant formerly had the same logo registered in the US 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 and Trademark Office (“USPTO”) website), that registration was cancelled in December 2014. The Panel has also verified that the Complainant currently holds a pending trade mark application filed on May 6, 2014 before the USPTO for the same mark (serial no. 82673604).
The description of the logo of such pending trade mark application 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. Furthermore, the word “Qatar” appears in a significantly larger font than the word “discover”.
The Complainant operates a website connected to its domain name <qatarairways.com>, which was registered on May 22, 1997. As of October 12, 2014, that website included a “Qatar Stopover” page including the following text under “Contact Us”: “Contact Discover Qatar to start planning your Qatar Stopover”. Beneath that there is the “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 disputed domain name bears a creation date of July 27, 2000. According to the Registrar, the disputed domain name has been registered to the Respondent Domain Admin since “at least” July 14, 2014.
There is no evidence of use of the disputed domain name for an active website. When visited by the Panel, the website consisted purely of a form inviting “business enquiries”.
5. Parties’ Contentions
A summary of the Complainant’s contentions is as follows:
The Complainant has made extensive international use of its DISCOVER QATAR trade marks, which are internationally well-known. The Complainant has used the mark worldwide in providing accommodation, transportation and tours for the public.
The disputed domain name consists of the Complainant’s trade mark in its entirety.
The disputed domain name is identical or confusingly similar to the Complainant’s trade mark.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not affiliated with the Complainant and the Complainant has not authorised the Respondent to use its mark.
The Complainant’s domain name <qatarairways.com>, the website at which includes the Complainant’s trade mark, predates the Respondent’s registration of the disputed domain name on July 27, 2000.
The Respondent has not registered the disputed domain name with bona fide intent as the Respondent is not a licensee of the Complainant.
The Complainant’s trade mark is well known and the disputed domain name will confuse the public into believing that the disputed domain name belongs to the Complainant. A domain name which misleads users does not confer rights or legitimate interests.
The disputed domain name was registered in bad faith. It is inconceivable that the Respondent was unaware of the Complainant’s trade mark when the Respondent registered the disputed domain name because the Complainant registered <qatarairways.com> in 1997.
The inclusion of the Complainant’s well known trade mark in the disputed domain name demonstrates that the Respondent must have been aware of the Complainant’s trade mark.
In all likelihood, the Respondent intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.
The Respondent’s use of the Complainant’s trade mark may cause Internet users to wrongly ascribe the services and offers on the website at the disputed domain name to the Complainant’s business.
A summary of the Respondent’s contentions is as follows:
The panel in Qatar Airways Q.C.S.C. v. Travelindex SA and Bernard Metzger, WIPO Case No. D2015-0327 (the “Travelindex Case”) found that the term “Discover Qatar” is highly descriptive and one which many people in the tourism industry may want to use for its descriptive value.
The Respondent registered the disputed domain name in order to use it “within the relied upon meaning” and not with the intention of infringing upon any third party rights or trade marks.
The Complainant has not demonstrated widespread use of the trade mark “DISCOVER QATAR.
The Respondent was not aware of the existence of the DISCOVER QATAR trade mark until it became aware of this dispute on May 6, 2015. The Respondent has not infringed the trade mark, nor has it received any compensation or advertising revenue from the disputed domain name.
The Respondent “Intelev” is a startup company whose business involves assisting travellers to make customised travel plans based on their unique social profiles taken from online social network data. The Respondent is connected with various entities including Swayam, LLC, incorporated in the US in 2005, rebranded as “Intelev” in 2012, and Input Software Solutions, incorporated in the United Kingdom of Great Britain and Northern Ireland since 1996.
The Respondent is building an Internet-based software application to be made available worldwide. It designed a beta version of the Respondent’s software in early 2000. The Respondent originally focussed on mobile phone applications but is now working on web-based services. The Respondent fully intends to use the disputed domain name to offer improved and compelling services.
To facilitate its service, the Respondent has registered generic domain names similar to the disputed domain name since well before the Complainant’s trade marks including <discoveruk.com>, <discoverberkeley.com>, <discovernyc.net>, <discoverafrica.org>, <discovereurope.org>, <discovercroatia.org> and <discoverperu.org>.
Lack of active use of a domain name does not establish lack of legitimate interest.
The Respondent has limited disclosure of its business plans to protect the Respondent’s trade secrets. The Respondent is willing to provide information if the Panel finds it necessary and all parties involved are willing to sign a non-disclosure agreement.
The Complainant’s claim that its rights precede registration of the disputed domain name in July 27, 2000, based on registration of <qatarairways.com> on May 22, 1997, is deceitful as this dispute does not concern the QATAR AIRWAYS trade mark.
The Complainant has presented no evidence of confusion.
The panel in the Travelindex Case found that there was a lack of evidence supporting the Complainant’s claim that its mark was well-known in the period 2005-2011 and that, even if the respondent in that case was aware of the Complainant’s DISCOVER QATAR logo on acquisition of the domain name, the Respondent might reasonably have taken the view that an ornate complex device of the kind in question could not conceivably generate exclusive rights in the descriptive term “discover Qatar”.
There is no evidence that the Respondent acted in bad faith. The Respondent has “actively refused” to use the disputed domain name for financial gain beyond the intended business purposes. The Respondent blocked GoDaddy domain parking services although the disputed domain name was originally used in such manner. The Respondent received no compensation from GoDaddy.
The Respondent has refused all offers of purchase of the Respondent’s similar domain names and has never used the disputed domain name to offer any services competing with the Complainant.
The Respondent asserts reverse domain name hijacking. The Complainant has not made any reasonable arguments in favour of bad faith. The Respondent has tried to mislead the Panel by relying on the registration date of the <qatarairways.com> domain name and has provided no compelling proof regarding use of the trade mark DISCOVER QATAR. The Complainant filed the Complaint to pressure the Respondent to transfer a domain name that pre-dated the Complainant’s rights. The Complaint has been a significant financial burden to the Respondent whereas the Complainant has abundant resources.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel disregards the Complainant’s US trade mark No. 3,429,764 as this has been cancelled. The Panel echoes the comment by the panel in the Travelindex Case that it is surprising that the Complainant did not draw attention to this fact.
That leaves the Complainant’s Qatari trade marks. The Panel considers that the disputed domain name is confusingly similar to those trade marks, the textual component of which consists of the term “discover Qatar” – both in English and transliterated into Arabic. Paragraph 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states:
“[…] as figurative, stylized or design elements in a trademark are generally incapable of representation in a domain name, such elements are typically disregarded for the purpose of assessing identity or confusing similarity, with such assessment generally being between the alpha-numeric components of the domain name, and the dominant textual components of the relevant mark.”
For the above reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP […] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
As to paragraph 4(c)(i) of the Policy, there is no evidence of any use of the disputed domain name for a bona fide offering of goods or services, nor of any demonstrable preparations for such an offering. The Respondent claims that for many years it has been preparing to use the disputed domain name but provides no supporting evidence, invoking the need to protect its “trade secrets” and offering to provide information if the Panel finds it necessary and if all parties sign a non-disclosure agreement.
However, as explained above, as the Complainant has made out a prima facie case the burden of production has shifted to the Respondent and it is the Respondent’s responsibility to include appropriate evidence of demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services with its Response. Even if the Respondent was truly concerned about confidentiality, the Respondent should still have been able to provide at least some non-confidential evidence sufficient to show that the Respondent had made some efforts towards a website at the disputed domain name over the period of some 15 years since the disputed domain name was allegedly acquired (but see further regarding the acquisition date in section 6.C below). Whereas the Respondent has not produced a single supporting document either in relation to this point or indeed as to any of its other assertions in the Response.
There is no evidence that paragraphs 4(c)(ii) or (iii) of the Policy apply in the circumstances of this case.
The Panel therefore concludes that the Respondent has no rights or legitimate interests in the disputed domain name and that the Complainant has therefore established the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
There is no evidence that the disputed domain name has ever been used for an active website. The Respondent acknowledges that, at one point, the disputed domain name was used for a registrar parking page but neither it nor the Complainant has supplied any archive screenshot illustrating such usage and it is not the role of the Panel to hunt for such evidence.
The Panel is of the opinion that it is appropriate to consider this case in the context of the principles of “passive holding” set out in the well-known case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. There the panelist noted that “the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith” and concluded that “it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”.
The panelist went on to say that
“… in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent’s behaviour. A remedy can be obtained under the Uniform Policy only if those circumstances show that the Respondent’s passive holding amounts to acting in bad faith.”
“[…] panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa. Some panels have also found that the concept of passive holding may apply even in the event of sporadic use […]”
Here, a major obstacle to a finding of passive holding as an indicator of bad faith is that, as the panel stated in the Travelindex Case, the facts of which bear some similarity to this case, the term “Discover Qatar” is highly descriptive and one which many people in the tourism industry may want to use for its descriptive value. The Complainant must therefore work hard to establish the likelihood that the Respondent selected the disputed domain name by reference to the Complainant’s trade mark and not for its obvious descriptive meaning.
While the Complainant does indeed claim that its DISCOVER QATAR trade mark is “internationally well known”, this is not borne out by the supporting evidence supplied with the Complaint, which consists only of the “Qatar Stopover” page on its website at “www.qatarairways.com” as of October 12, 2014, mentioned in section 4 above, plus two 2005 invoices (for hotel accommodation and tourism services) featuring the DISCOVER QATAR logo and four Qatar Airways posters/advertisements also featuring the logo - two undated and the others dated 2008, 2012, and 2014 respectively.
It is not clear precisely when the Respondent acquired the disputed domain name. As mentioned in section 4 above, the Registrar’s Whois database gives a “creation date” of July 27, 2000. The Complainant assumes that the Respondent acquired the disputed domain name on the creation date and the Response clearly implies likewise. However, on Registrar verification, the Registrar informed the Center that the disputed domain name had been registered to the Respondent Domain Admin since “at least” July 14, 2014, although that still leaves open the possibility that the disputed domain name was previously registered to an entity connected with the current registrant.
In any event, there is no evidence indicating the scale and extent of the Complainant’s use of the mark at any point in time. Even if the Panel proceeds on the basis most favourable to the Complainant, namely that the Respondent first acquired the disputed domain name as recently as July 14, 2014, there is still no evidence showing that the Complainant’s trade mark had achieved any degree of fame by then and no reason for the Panel to think that the Respondent acquired the disputed domain name other than for its descriptive value.
The Complainant relies on its 1997 acquisition of the domain name <qatarairways.com>, the website of which promoted the DISCOVER QATAR trade mark, as predating the Respondent’s acquisition of the disputed domain name (which the Complainant assumed to have occurred in 2000). However, in the Panel’s view, the date that the Complainant acquired <qatarairways.com> is not of assistance here; what is potentially germane is the period of such promotion as well as its extent and reach. The Complainant has not stated exactly when the promotional content appeared on its website but its screenshot is dated October 12, 2014, after the (deemed) acquisition date of the disputed domain name, and there no information at all concerning the extent or reach of this content, such as website visitor / geo-location statistics.
In the Panel’s view, therefore, the Complaint falls well short of establishing “passive holding” as an indicator of bad faith.
The Panel would add that it does not find the Response entirely credible. The Respondent relates the disputed domain name to an alleged mobile / web travel-related project dating back to as long ago as 2000 but without any explanation for the delay of some 15 years in launching the alleged venture and without a single supporting document. The Respondent refers to various similar descriptive domain names allegedly owned by it but there is no evidence showing when those domain names were acquired or how they have been used. The Respondent vaguely alludes to various related entities but without explaining exactly who they are, or their roles, or how they are connected with each other. Then there is what can at best be described as a lack of clarity as to the registration history of the disputed domain name. All of this casts some doubt on the credibility of the Respondent’s assertions generally, including its alleged lack of knowledge of the Complainant’s mark until the Complaint was filed.
However, while both the Complaint and Response are lacking in supporting evidence, and unconvincing in certain respects, the Complainant has the burden of establishing each of the three elements required by paragraph 4(a) of the UDRP on the balance of probabilities. See paragraph 4.7 of the WIPO Overview 2.0.
Taking all of the above matters into account, the Complainant has not satisfied the Panel on the balance of probabilities that the Respondent registered the disputed domain name by reference to the Complainant’s trade mark rather than for its descriptive value and, therefore, that the disputed domain name was registered in bad faith.
D. Reverse Domain Name Hijacking (“RDNH”)
“Paragraph 15(e) of the UDRP Rules provides that, if ‘after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding’”. Reverse Domain Name Hijacking is defined under the UDRP Rules as ‘using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name’.
WIPO panels have found that the onus of proving complainant bad faith in such cases is generally on the respondent, whereby mere lack of success of the complaint is not itself sufficient for a finding of Reverse Domain Name Hijacking. To establish Reverse Domain Name Hijacking, a respondent would typically need to show knowledge on the part of the complainant of the complainant’s lack of relevant trademark rights, or of the respondent's rights or legitimate interests in, or lack of bad faith concerning, the disputed domain name. [...]
WIPO panels have found Reverse Domain Name Hijacking in circumstances including where: the complainant in fact knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP; […] or […] misled the panel; a respondent’s use of a domain name could not, under any fair interpretation of the reasonably available facts, have constituted bad faith; the complainant knew that the respondent used the disputed domain name as part of a bona fide business for which the respondent obtained a domain name prior to the complainant having relevant trademark rights. […]”
The Panel declines to make a finding of RDNH in this case. While the Complaint was indeed weak, there is nothing to suggest that, when it filed the Complaint, the Complainant knew or should have known that it could not prove one of the essential elements required by the UDRP or that the Complainant was out to harass the Respondent. While the Complainant’s failure to disclose the cancellation of its US trade mark No. 3,429,764 did give the Panel pause for thought, it is possible that this was due to inadvertence and, in any case, it is not in dispute that the Complainant’s Qatari trade marks are valid.
For the foregoing reasons, the Complaint is denied.
Date: July 6, 2015