Geographical identifiers and UDRP requirements: a landmark case (D2019-1758, visitqatar.com)
The presence of a geographical identifier in a domain name at the heart of a judicial or extra-judicial procedure almost always confers a complex nature to the debates. Among the difficulties encountered, the complainant must show that he holds an exclusive trademark right. On this point, the decision D2019-1758, which concerns visitqatar.com, must be elevated to the rank of landmark case as it is structured, unusually documented and motivated (WIPO, D2019-1758, Qatar National Tourism Council v. Teymur Mehdiyev, November 1, 2019).
The Qatar National Tourism Council has initiated a UDRP procedure to obtain the transfer of the domain name visitqatar.com. This domain name was registered at the latest in 2012. At the same time, the Qatar National Tourism Council was beginning to develop its presence on the Web and on social networks. In 2016, visitqatar.com was acquired by a certain M. M. The website included, on the home page, a header with the words “Visit Qatar” with a logo forming an oryx, the emblem of Qatar. The header also contained the wording “Visit Qatar | Your holiday destination”.
The UDRP principles require the decision-maker to question the similarity or identity of the disputed domain name to the trademark, which implies, first, the verification of the existence of an exclusive trademark. In this case, the panel was therefore led to rely on paragraph 1.6 of the WIPO Jurisprudential Overview, which addresses the following question: Can a complainant’s rights in a geographical term provide standing to file a UDRP complaint? (WIPO Jurisprudential Overview 3.0, para 1.6).
“Geographical terms used only in their ordinary geographical sense, except where registered as a trademark, would not as such provide standing to file a UDRP case.
Geographical terms which are not used solely in a geographically descriptive sense (e.g., “Nantucket Nectars” for beverages) and which are registered as a trademark, would provide standing to file a UDRP case.
Panels have exceptionally found that geographical terms which are not registered as trademarks may support standing to file a UDRP complaint if the complainant is able to show that it has rights in the term sufficient to demonstrate consumer recognition of the mark in relation to the complainant’s goods or services (often referred to as secondary meaning).
Under the UDRP however, it has generally proven difficult for an entity affiliated with or responsible for a geographical area (which has not otherwise obtained a relevant trademark registration) to show unregistered trademark rights in that geographical term on the basis of secondary meaning.
It is further noted that the Report of the Second WIPO Internet Domain Name Process ultimately declined to recommend specifically extending protection to geographical terms as such under the UDRP.” (WIPO, Second WIPO Internet Domain Name Process, The Recognition of Rights and the Use of Names in the Internet Domain System, 3 Sept. 2001, para 205 et seq.).
After recalling these principles, the panel proceeded in two steps.
As a first step, in general terms, the panel identified the trends that emerge from the UDRP decisions when a domain name consist in a geographic identifier. The panel drew the following conclusions:
“Where a complainant has obtained a registered word trademark for a word which is precisely the same as the geographical area in question, it will normally succeed in establishing the first element […]
Where however the complainant relies upon a registered trademark for words (including words in stylised form) which include the geographical term together with other words, it will likely not prevail on the first element, as panels generally decline to find confusing similarity to a domain name consisting solely of the geographical term given that the identification function occurs as a result of the geographical term being combined with the non-geographical terms in the trademark […]
Similarly where the complainant owns a device or figurative registered trademark where the only word or words present correspond to the geographic region, it is unlikely to prevail on the first element. Panels again generally decline to find confusing similarity given the identification function of the geographical term and the trademark being stylised, as the geographical term on its own fails to embody sufficient unique/singular source-identifying distinctiveness […]
But see Ministre des Relations internationales, de la Francophonie et du Commerce extérieur (Minister of International Relations, La Francophonie and External Trade), acting in this proceeding for and on behalf of the Government of Québec v. Anything.com, Ltd., WIPO Case No. D2013-2181, <quebec.com>, where the complainant did succeed on the first element relying on registered trademarks for QUEBEC with a design.
Exceptionally, if a registered trademark including a geographical designation has been used in relation to goods or services that have no connection with the geographical region concerned, the complainant may prevail on the first element […]
Turning to unregistered trademark issues, it is generally unlikely that a complainant will be able to succeed in establishing such trademark rights in a term which is the geographic identifier on its own […]. However exceptionally, if the geographic identifier has obtained significant recognition in relation to the goods or services which the complainant in particular provides at the location in question, that normal principle may be displaced […]”. (WIPO, D2019-1758, Qatar National Tourism Council v. Teymur Mehdiyev, November 1, 2019).
As a second step, more specifically, the panel examined precedents concerning domain names composed, on the one hand, of a geographical identifier and, on the other hand, of a word such as “visit” or “discover”.
The panel noted that the presence of a registered trademark was not enough, on its own, to obtain the transfer of the domain name. In some cases, the complainant had established the existence of a trademark right, but had not demonstrated the bad faith of the domain name holder (eg D2015-0327, discoverqatar.org; D2015-0798, discoverqatar.com; D2016-0110, visitthefaroeislands.com; D2017-0985, visit versailles.com). The panel also explained in detail the case D2007-0296 (D2017-0296, visitcopenhagen.com) in which the decision makers had noted the absence of a trademark certificate and refused to comment on the issue of a common law trademark.
In this “visitqatar” case, the Qatar National Tourism Council issued two claims. First, the complainant exhibited a semi-figurative trademark certificate incorporating the word “Qatar”. Second, it sought to have a non-registered trademark right (common law trademark) recognized over the term “visitqatar”.
On the first claim, the commission timidly adopted the solution adopted in the case D2009-1279, pariswifi.com. As a reminder, it was decided that:
“The Complainant clearly has ‘rights’ in the Paris device mark for the purposes of paragraph 4(a)(i) of the Policy. But it has not proved that it holds any ‘Paris’ word mark, or asserted that it holds any ‘Pariswifi’, or ‘Wifiparis’ mark (figurative or word). The word ‘Paris’ on its own is prima facie no more than a geographic indicator – the name of a very large, well known city. Thousands of traders no doubt find it necessary to describe their goods or services as coming from, or being offered in, Paris.” (D2009-1279, pariswifi.com).
The following paragraph is particularly eloquent:
“The confusing similarity question can be difficult where a complainant relies on a figurative mark comprising a logo and a descriptive or geographical expression. On one approach, the logo element of the complainant’s mark is ignored in the comparison with the disputed domain name, on the basis that it is normally the words in a figurative mark which convey the mark’s principal meaning, or impression. But where the words in the mark are purely descriptive, or the name of a well-known place, the words alone will not convey any meaning other than the descriptive or geographical one […].” (D2009-1279, pariswifi.com).
Back to the dispute over the domain name visitqatar.com, the panel considered that the principles drawn from the pariswifi.com case should probably apply, while adding immediately that there was no need to reach a conclusion on this point. Indeed, for the panel, the existence of unregistered trademark rights was sufficient.
Has the Qatar National Tourism Council acquired enforceable rights to the term “visitqatar”? In response to this question, the panel again referred to WIPO’s Jurisprudential Overview, specifically paragraph 1.3: ” What does a complainant need to show to successfully assert unregistered or common law trademark rights? (WIPO Jurisprudential Overview 3.0, para 1.3).
“To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.
(Particularly with regard to brands acquiring relatively rapid recognition due to a significant Internet presence, panels have also been considering factors such as the type and scope of market activities and the nature of the complainant’s goods and/or services.)
Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning.
As noted in section 1.1.2, for a number of reasons, including the global nature of the Internet and Domain Name System, the fact that secondary meaning may only exist in a particular geographical area or market niche does not preclude the complainant from establishing trademark rights (and as a result, standing) under the UDRP.
Also noting the availability of trademark-like protection under certain national legal doctrines (e.g., unfair competition or passing-off) and considerations of parity, where acquired distinctiveness/secondary meaning is demonstrated in a particular UDRP case, unregistered rights have been found to support standing to proceed with a UDRP case including where the complainant is based in a civil law jurisdiction.
The fact that a respondent is shown to have been targeting the complainant’s mark (e.g., based on the manner in which the related website is used) may support the complainant’s assertion that its mark has achieved significance as a source identifier.
Even where a panel finds that a complainant has UDRP standing based on unregistered or common law trademark rights, the strength of the complainant’s mark may be considered relevant in evaluating the second and third elements.” (WIPO Jurisprudential Overview 3.0, para 1.3).
It is therefore in the light of the principles established in the UDRP case-law that the panel ultimately had to rule on the existence of a trademark, namely the “visitqatar” trademark. To this end, the panel conducted a review of evidence of use of the trademark claimed by the Qatar National Tourism Council: its website and social networks (Twitter, Youtube, Facebook, Instagram). During this step, the panel kept in mind the following principle: unless the term in question is distinctive, it will be necessary to prove the distinctiveness acquired through use (D2019-1352, paguecombitcoin.org). In this case, the said website and social network accounts actually contain the terms “visitqatar” or “visit qatar”. As for measuring the radiation of its communication tools, the Qatar National Tourism Council has produced statistics:
- number of views per month for the website;
- number of subscribers, publications and reactions on social networks.
With regard to figures that are not public or impossible to verify, the panel is right in stating that it does not have the means to verify their accuracy. Indeed, such an operation would require an expertise incompatible with the nature and the speed of the UDRP procedure.
For the panel, there is no doubt that social media can, at least in theory, establish unregistered trademark rights. It refers, in this respect, to decision D2018-2597 (D2018-2597, adamhasiak.com). Based on the evidence provided, the Panel concluded that, “on the balance of probabilities, there has been sufficient use of the “visitqatar” term (e.g., on social media) to conclude it has acquired distinctiveness for the Complainant” (WIPO, D2019-1758, Qatar National Tourism Council v. Teymur Mehdiyev, November 1, 2019). The panel went even further by stating that “the term “visitqatar” does function as a trademark and provides an indication of origin (namely that it will denote that the likely source of information it points to is from the Complainant, an official Qatari source)” (WIPO, D2019-1758, Qatar National Tourism Council v. Teymur Mehdiyev, November 1, 2019).
In the end, the Qatar National Tourism Council has succeeded in demonstrating the existence of a trademark, the absence of the defendant’s right or legitimate interest and the bad faith of the defendant. The complainant thus obtained the transfer of the domain name visitqatar.com.
In conclusion, the territorial authority wishing to obtain the transfer of a domain name similar or identical to the name of the territory in question must ideally own a registered verbal trademark or, failing that, a registered semi-figurative or stylized or, ultimately, a non-registered trademark (common law trademark). In all cases, this trademark must be exploited, the seriousness of which must be demonstrated in due time.