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Qatar Airways Loses Attempt To Grab DiscoverQatar.org & QatarTourism.org
#1
THURSDAY,14 May 2015 THE DOMAINS

According to the news from Domain Forum of China on May 14th,Qatar Airways Doha, Qatar, just lost its bid to grab the domain names discoverqatar.org and qatartourism.org in a UDRP which are owned by Travelindex SA

The one member panel of Tony Willoughby found the Complaint which owns qatarairways.com slogan on its site “Qatar – Discover the Spirit” did not give it trademark rights nor did the “Discover Qatar” logo which they trademarked.

Qatar Airways has also filed a UDRP against the owner of the domain name DiscoverQatar.com, that case is pending.

The domain holder (Travelindex SA) is a private company based in the Seychelles and engaged inter alia in the publication and management of travel directories and websites.

DiscoverQatar.org 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.

QatarTourism.org 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.

“”The Complainant relies upon its DISCOVER QATAR logo device mark registered in Qatar. The claimed U.S. trademark 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.

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.

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 QATAR trademark 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 trademark, 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.

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.””
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