202105.12

United States: a strict interpretation of the word “registration” of a domain name in the ACPA excluding de facto the act of acquisition

In the United States, more than twenty years after the Anti-cybersquatting Consumer Protection Act (ACPA), the debate on the notion of “registration” is at the heart of a legal battle between Mr. M. and the government of Qatar for the ownership of visitqatar.com.

In this case, the chronology is crucial. The domain name in question was created (or initially registered) by a third party in 2004. A query on Archive.org reveals sporadic activity between 2004 and 2014 and no active use at certain times. In other words, the site was “dormant” (v. T. M. v. Qatar National Tourism Council, No. 1: 19-cv-03353-DDD-NRN, p. 1). In the 2010s, the government of Qatar began to develop a digital presence on social networks using the motto “Visit Qatar”. However, the information relating to the commencement of this advertising campaign based on the “Visit Qatar” brand is contradictory. Indeed, according to the UDRP decision D2019-1758, rendered on November 1, 2019, the commercial use of the expression “Visit Qatar” by the government of Qatar dates back to March 2012 (WIPO, D2019-1758, Qatar National Tourism Council v. TM, November 1, 2019, <visitqatar.com>, Panelists Nick J. Gardner (pres.), Alistair Payne, Adam Taylor). On the other hand, according to the judgment rendered on April 1, 2021, by Judge Daniel Domenico, Qatar did not start using this expression until October 2015 (v. T. M. v. Qatar National Tourism Council, No. 1: 19-cv -03353-DDD-NRN, p. 9). On January 29, 2016, Mr. M. acquired the domain name without the website. On July 23, 2019, Qatar initiated UDRP proceedings against Mr. M. and won the case before an administrative commission composed of three members (WIPO, D2019-1758, Qatar National Tourism Council v. TM, November 1, 2019, <visitqatar.com>, Panelists Nick J. Gardner (pres.), Alistair Payne, Adam Taylor: v. iptwins.com, 2019-11-26). According to the administrative commission, there is no doubt that social media can, at least in theory, establish unregistered trademark rights (common law trademark). Given the evidence produced by Qatar, the panel considered that “in the present case the evidence establishes, 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. TM, November 1, 2019, <visitqatar.com>, Panelists Nick J. Gardner (pres.), Alistair Payne, Adam Taylor: v. iptwins.com, 2019-11-26). The panel added: “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. TM, November 1, 2019, <visitqatar.com>, Panelists Nick J. Gardner (pres.), Alistair Payne, Adam Taylor: v. iptwins.com, 2019-11-26). Subsequently, the panel ordered the transfer of the domain name.

Dissatisfied with this decision, Mr. M. initiated legal proceedings in the United States to obtain, based on the ACPA, a judgment declaring that he had not committed any act of cybersquatting. For its part, Qatar issued a counterclaim for trademark infringement. On April 1, 2021, Judge Daniel Domenico ruled in favor of Mr. M. (T. M. v. Qatar National Tourism Council, No. 1: 19-cv-03353-DDD-NRN).

The discussions focused on the interpretation to be given to the expression “at the time of registration” and to the word “registration” as they appear in the ACPA, in order to qualify the act of acquiring a domain name in light of Article 15 USC § 1125(d)(1)(A) (law.cornell.edu). In other words, it is imperative to consider the date of creation of the domain name exclusively? Alternatively, is it possible to consider the date of acquisition? In a way, this comes down to questioning whether the acquisition of a domain name is tantamount to a new registration. The stake is that of anteriority. Indeed, if we consider that the date of creation of the domain name prevails over the date of acquisition, the holder of the domain name who acquired it benefits from an extended priority. In the present case, that would amount to ruling that the domain name <visitqatar.com> (created in 2004), acquired by Mr. M. (in 2016) predates the “Visit Qatar” trademark (2012 or 2015) of the Qatari government. On the contrary, if it is considered that the date of creation should be set aside in favor of the date of acquisition, the rights of the new holder of the domain name are only enforceable from the date of acquisition. In the present case, that would mean that Mr. M. cannot claim any prior rights against the Government of Qatar.

In its decision of April 1, 2021, the court briefly recalled the hesitations of American case law on this issue (TM v. Qatar National Tourism Council, No. 1: 19-cv-03353-DDD-NRN, pp. 11-12 ). In short, according to the Ninth Circuit, “at the time of registration” refers exclusively to the initial registration of the domain name or, in other words, the creation of the domain name. In contrast, the Third Circuit refuses to restrict the expression “at the time of registration” or the word “registration” only to the date of creation of the domain name:

“we believe that the plain meaning of the word “registration” is not limited to “creation registration.” (…) We hold that the word “registration” includes a new contract at a different registrar and to a different registrant.” (Schmidheiny v. Weber, 319 F.3d 581 (3d Cir. 2003)).

In the present case, the court gave a strict interpretation of the word “registration” so that the only date likely to be considered is that of the creation of the domain name or the date of the initial registration. In other words, according to the court, it does not matter whether i) the domain name has subsequently been transferred to a third party; ii) it was transferred with the website or whether it was dissociated from the website; iii) the initial registration contract no longer exists; iv) the parties to the initial registration contract are the same or not.

Such an interpretation is deplorable for reasons that we have already had the opportunity to explain (iptwins.com, 2020-12-06). It should be added that the court’s point of view contradicts extra-judicial jurisprudence rigorously constructed by eminent experts. Indeed, third-party decision-makers do not exclude from their reasoning the date, necessarily later, of the transfer of the domain name:

“Merely because a domain name is initially created by a registrant other than the respondent before a complainant’s trademark rights accrue does not however mean that a UDRP respondent cannot be found to have registered the domain name in bad faith. Irrespective of the original creation date, if a respondent acquires a domain name after the complainant’s trademark rights accrue, the panel will look to the circumstances at the date the UDRP respondent itself acquired the domain name” (WIPO Jurisprudential Overview 3.0, para. 3.8.1).

Moreover, the cases in which a domain name has been acquired in bad faith are innumerable (WIPO, D2003-0256, Pfizer Inc. v. Sangwoo Cha, <viagra.net>, June 19, 2003, transfer; WIPO, D2008 -1828, Santhera Pharmaceuticals (Switzerland) Ltd. v. Catena Canada, <catena.com>, January 7, 2009, transfer; WIPO, D2019-1541, Skyscanner Limited v. Colors Ltd, <sky-scanner.net>, September 5, 2019, transfer, to name a few). Of course, the principles governing the out-of-court settlement of domain names explicitly contain the word “acquisition” (Articles 4.b.i) and 4.c.ii)), which facilitates the interpretation work. Nevertheless, the court had the opportunity to give the ACPA an interpretation in line with extra-judicial jurisprudence while affirming its knowledge of cybersquatting’s legal and economic mechanisms. The court did not seize such an opportunity.

In this case, by refusing to incorporate the act of acquisition into the registration concept, the court conferred on the holder of the domain name an artificial priority which results in undue rights. “Artificial” because the transfer concerned the domain name exclusively, dissociated from any activity attached to it. Indeed, if the domain name had been transferred with a website demonstrating an actual, uninterrupted commercial activity carried out in good faith since the date of creation of the domain name, or at least before the birth of the “Visit Qatar” trademark, then Mr. M. could have invoked prior rights. However, in all likelihood, this was not the case.

Finally, it is worth noting that Qatar has opted for a different strategy from that of France, which, regarding the domain name France.com, had successfully used the sovereign immunity argument (iptwins.com, 2021 -04-28).

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