BeoutQ.se Domain Name Dispute

We missed a small development on the intellectual property side of the Qatar diplomatic crisis in the GCC. Several months ago, Qatar attempted to take control of the domain name beoutq.se, but its attempt was not successful.

Qatar is taking a variety of actions to stop the illegal broadcasting of the signal of beIN Sports by beoutQ – a pirate sports TV network intended to provide sports fans in Saudi and Bahrain with an alternative to watching beIN Sports. In both of these countries, beIN Sports has been officially banned as part of their ongoing feud with Qatar.

In addition to the variety of legal complaints Qatar is making against Saudi, Bahrain, and the UAE in regard to their failure to allow Qatari rights-holders to enforce their intellectual property rights in connection with the infringement of beIN Sports trademarks and broadcasting rights, Qatar made a separate small attempt at taking control of one of the domain names from which beoutQ was operating: beoutq.se.

Most domain name registries provide an easy to access dispute resolution mechanism to combat cybersquatting of domain names. ICANN, the body responsible for generic top-level domain names (such as .com), uses something called the UDRP (Uniform Domain-Name Dispute-Resolution Policy) to allow anyone to request that the registration of a domain name is revoked or request that a domain name is transferred to them if they can establish that:

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.

Section 4(a) of the UDRP

In order for someone to successfully revoke or transfer a domain name, that person must satisfy all of these three conditions. The complaint does not involve going to court and can be conducted online through any UDRP provider such as WIPO. The cost for conducting a UDRP proceeding is nominal. For example, WIPO charges as little as 1500 dollars as administrative fees to conduct a UDRP proceeding.

The UDRP applies to all generic top-level domain names regulated by ICANN, but it does not automatically apply to country code top-level domain names, which are managed by the designated national registry for each country. However, some of these national registries have adopted identical or similar dispute resolution policies to the UDRP.

In the case of beoutQ, it appears that those behind the website were careful not to use a generic top-level domain name for beoutQ, and instead rely on country code domain names such as beoutq.se (Sweden) and beoutq.sx (Sint Maarten).

Late in 2017, beIN Media Group made a complaint to WIPO requesting that the domain name beoutQ.se is transferred to them instead of its current owners. The full text of the complaint, the investigation, and the findings, can be read here.

In the case of beoutq.se, Sweden has adopted a very similar policy to the UDRP and has also designated WIPO as a body that can carry out the dispute resolution procedure. In Sweden, the registration of a .se domain name may be revoked or transferred if the following conditions are satisfied:

A Domain Name may be deregistered or Transferred to the party requesting dispute resolution proceedings if the following three conditions are fulfilled:
1. The Domain Name is identical or similar to
a. a distinguishing product feature
b. a distinguishing business feature
c. a family name
d. an artist’s name (if the name is not associated with someone who died a long time ago)
e. a title of another party’s copyrighted literary or artistic work,
f. a name that is protected by the Regulation concerning Certain Official Designations (1976:100), or
g. a geographic designation or a designation of origin that is protected by the European Council’s Regulation (EU) 510/2006
h. a geographic designation that is protected by the European Council’s Regulation (EU) 110/2008
which is legally binding in Sweden and to which the party requesting dispute resolution can prove its rights, and
2. The Domain Name has been registered or used in bad faith, and
3. The Domain Owner has no rights or justified interest in the Domain Name.
At all times, applicable instructions pertaining to the three conditions are available at the end of these Registration Terms and Conditions under the heading “Instructions pertaining to ADR (Item 7).”

Section 7 of .se Terms and Conditions of Registration

Even though the conditions of a successful transfer for a .se domain name appear lengthier than those under the UDRP, they are essentially similar to the standard UDRP conditions but explicitly give the right to request a transfer or a revocation on the basis of rights beyond trademarks such as family names, titles of copyright works, and geographical designations. There is also a small difference between the wording of UDRP conditions and .se Terms and Conditions. Under Section 4(a)(i) of the UDRP, the domain name must be identical or confusingly similar, while under Section 7(1) of the .se Terms and Conditions the domain name must be identical or similar (without a reference to ‘confusion’).

The discussion by the panelist of the complaint is short: the dispute resolution panelist held that while beIN Sports had a variety of trademarks that are legally protected in Sweden, he did not find these trademarks to be identical or similar to the domain name beoutQ. The conditions for a successful transfer of a domain name must all be satisfied for the complaint to be upheld, and since beIN Sports failed the first step, it was not necessary for the panelist to make any further assessment.

From the perspective of the UDRP, the conditions make it clear that the domain name has to be identical or confusingly similar. In the case of beoutQ.se, even though the service itself clearly infringes the broadcasting rights of beIN Sports, it is extremely unlikely for any customer to confuse the two names. It clear that the name beoutQ.se is meant to make fun of beIN Sports and offend Qatar.

Unlike the UDRP, the .se Terms and Conditions do not explicitly mention the confusion element of the similarity criteria, and therefore one can argue that it is not necessary for the complainant to establish that the domain name can be confused to successfully transfer a domain name. Even if that was the case, which I do not personally think is a reasonable interpretation of what similarity means, it is still difficult to argue that the domain name is similar to beIN Sports trademark just because it merely includes two letters (‘be’)  from the existing trademarks of beIN Sports. It is not reasonable to expect beIN Sports to be able to claim that a domain name potentially infringes its rights because it includes one of the most common verbs in the English language.

It is very clear that beoutQ is violating a variety of intellectual property rights owned by beIN Sports, but I believe that the outcome of the beoutq.se domain name proceeding is actually correct. 

The .se dispute resolution process is technically a form of commercial arbitration, and therefore the decision of the panelist (the arbitrator) is legally binding and cannot be appealed.

Funnily enough, even though Qatar’s attempt at taking control of the domain name failed, it appears that the owners of the domain name were intimated by the proceeding and even asked WIPO after proceeding commenced if they can simply shut down the domain name to get this case to stop:

“Hi,
If we want to suspend the domain in question and close this case how can we proceed?
Kind regards, Oliver”

WIPO

It does not appear that the panelist responded to their question, but beoutQ stopped using the .se domain name nonetheless and currently appears to be using beoutq.sx only. Ironically, even though Qatar lost the proceeding, it actually succeeded in shutting down the domain name beoutQ.se.

The formal complaints that Qatar is taking against the Saudi, the UAE, and Bahrain at the WTO in connection with the infringement of the rights of beIN Sports and other Qatari rights-holders are still ongoing, but have not progressed since November last year when a panel was established to examine Qatar’s complaint against the UAE.

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