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Summary Judgment of No Cybersquatting in Domain Name Lawsuit

Posted by Thomas P. Howard | Apr 06, 2021 | 0 Comments

Ruling on an issue of first impression for Colorado and the Tenth Circuit, the U.S. District Court for the District of Colorado issued an order granting summary judgment of no cybersquatting under the Anti-cybersquatting Consumer Protection Act (“ACPA”), 15 U.S.C. § 1125(d), in Mehdiyev v. Qatar National Tourism Council, No. 19-cv-03353-DDD-NRN, on April 1, 2021.

Teymur Mehdiyev is the current owner of the domain name <>.  An unrelated third party had registered the <> domain name in June 2004, and Mehdiyev subsequently acquired the domain name in January 2016.

Qatar National Tourism Council (“Council”) was formed by the government of Qatar in 2014.  Council claimed to have developed trademark rights in VISIT QATAR based on its use of the “#visitqatar” hashtag on social media beginning in October 2015, just a few months before Mehdiyev acquired the domain name in January 2016. Some three years later, in July 2019, the Council initiated a UDRP arbitration for cybersquatting against Mehdiyev over the <> domain name based on its alleged trademark rights.

This case was filed by Mehdiyev on November 26, 2019, after an adverse ruling by the UDRP panel in November 2019 ordering Mehdiyev to transfer the <> domain name to the Council.  By seeking a declaratory judgment of no cybersquatting under the ACPA, Mehdiyev effectively was seeking to overturn the adverse UDRP decision.  The District of Colorado had jurisdiction because the registrar for the <> domain name was located in Denver, Colorado.

Mehdiyev later filed a motion for summary judgment of no cybersquatting under the ACPA based on the undisputed fact that the <> domain name was registered in 2004, and that the Council did not begin to use the “#visitqatar” hashtag on social media for its alleged trademark rights until October 2015 over a decade later.  Under the ACPA, a claim of cybersquatting requires that the asserted trademark, here VISIT QATAR, be “distinctive at the time of registration of the domain name.” 15 U.S.C. § 1125(d)(1)(A).

The Court's statutory interpretation of the ACPA focused on the “at the time of registration of the domain name” language.

Read plainly, the statute suggests that registration is a singular event that occurs at a fixed point in time—literally “time of registration”—not some shifting occurrence that slips in and out of existence depending on a grab-bag of factors as the Council argues.

In addition, the Court relied on a different subsection of the ACPA, namely 15 U.S.C. § 1125(d)(1)(B)(VIII), which refers to “registration or acquisition of … domain names.” In view of this “explicit” distinction between “acquisition” and “registration,” to hold that a domain name is registered “after each acquisition of a domain name would render the specific references to acquisition in § 1125(d)(B)(VIII) meaningless.” Thus, the canon against surplusage further supported the Court's statutory interpretation.

In discussing a circuit split over the interpretation of the ACPA between the Ninth Circuit on one hand, and the Third and Eleventh Circuits on the other, the Court noted that while the Ninth Circuit concluded that “that the ‘time of registration' refers only to the initial registration of a domain name and not to aftermarket sales or acquisitions,” the Third and Eleventh Circuits have held that subsequent “re-registrations” of a domain name also are considered covered by the “time of registration” language in the ACPA. Compare GoPets Ltd. v. Hise, 657 F.3d 1024 (9th Cir. 2011) with Schmidheiny v. Weber, 319 F.3d 581 (3d Cir. 2003) and Jysk Bed'N Linen v. Dutta-Roy, 810 F.3d 767 (11th Cir. 2015).

The Court then noted that “the concept of ‘re-registrations' has no basis in the text,” and “does not appear anywhere in the statute.” Moreover, the text of the ACPA speaks of “the time,” not “the times” or the “time of registrations.”

The plain meaning of this is that a registration is a single event, not something that is redone via the sort of background changes [as Council] suggests.

The whois database for domain name registrations maintained by ICANN, which stated that the <> domain name has been registered since 2004, also was cited by the Court as corroborating its understanding as to the time of registration.

The Court further noted that a contrary approach would create policy problems by requiring parties to look not at that ICANN date but to any variety of public and non-public information to decide when a domain was registered, which would add confusion and uncertainty.

While § 1125(d)'s obvious purpose is to prevent cybersquatting, it also helps provide those who own or are developing potentially distinctive marks an incentive to either choose marks that are not similar to domains that are already registered, or, perhaps, to purchase those domains before they expend significant goodwill creating their similar marks. Allowing a mark owner to undo an otherwise valid, pre-existing registration by calling it cybersquatting would be akin to building a house on land subject to another's lien and calling the lienholder a squatter. The incentives created by allowing that possibility undermine the broader purposes of the Act, and are not necessary to prevent true cybersquatting.

Noting that the Council began developing its mark “after <> was registered and now seeks to get around that fact because the registration was transferred,” the Court granted summary judgment of no cybersquatting because “the statute does not turn on the ownership or time of transfer of domains—it turns on the time of registration.”

Mr. Mehdiyev was represented by James Juo and Thomas P. Howard of THOMAS P. HOWARD LLC.

About the Author

Thomas P. Howard

Thomas Howard is an experienced trial lawyer that handles intellectual property litigation nationwide, including copyright, trademark, trade secret and patent litigation, as well as complex civil litigation, including breach of contract, interference with contract, breach of fiduciary duty, conspiracy, fraud and fraudulent transfer of assets.


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