Regarding DiamondPoint.com Decision, Respondent Wins Lawsuit

In the latest issue of the UDRP Decision, Complainant Jakob's claim to transfer the domain name DiamondPoint.com to Complainant was denied, but at the same time Respondent's request for a ruling on reverse domain name hijacking was also denied.

Previously, Jakob Ruben van Gelder filed a UDRP to seize the DiamondPoint.com domain name, claiming that the domain name infringed a number of Dutch trademarks. They sought to label the defendant as a “cybersquatter” based solely on the number of domain names owned.

1. The Parties' Dispute

The Complainant:

i. The Complainant asserts that the use of a domain name for cybersquatting is clearly considered to be in bad faith and adds that there is no conceivable bona fide use of the disputed domain name on the website associated with the disputed domain name, which has been selling the disputed domain name for many years, indicating that the Respondent registered the disputed domain name for the primary purpose of selling it to a party with actual rights and legitimate interests in the domain name. ii.

II. On its own website, the Complainant states that it has been a well-known brand of luxury jewelry in the Netherlands since 1904, has been operating through the De Bijenkorf store since 1987, and has held the corresponding registered trademark rights since 1989. The Complainant asserts that it has invested heavily in the promotion and protection of its trademarks, adding that the trademarks are displayed in stores and online to millions of visitors and have thus become well-known.

Respondent:

i. The Respondent alleges that it registered the Disputed Domain Names in 2001 with the intention of acquiring ownership because of the inherently descriptive nature of the Domain Names and denies any knowledge of the Complainant's trademarks or business operations at that time.

II. Respondent alleges that the term is a common phrase widely used in several industries and descriptively refers to an instrument with a diamond tip. Respondent asserts that the term is used in a number of businesses and trademark registrations around the world that are unrelated to Complainant and adds that the term is not unique to Complainant's brand.

2. The Panel's Observations

i. The Complainant asserts that the Respondent is a frequent domain name squatter based on its involvement in previous domain name disputes, while the Respondent attempts to argue that it has lost certain court cases for a reason, while insisting that it has prevailed in other cases as well as in cases brought under the Policy. The Panel finds that there is no evidence of any pattern of cybersquatting, of which the disputed domain name itself is a part, and that it is therefore irrelevant to the current administrative proceedings.

II. Second, the fact that Respondent may have registered two other phrases as domain names, with the word “point” as the second word, may be seen as supporting a pattern of registration in its case. Both parties appear to recognize that each case under the Policy must be dealt with on its own merits, and the Panel here makes no finding based on Respondent's past history of domain name disputes.

Final Verdict: The transfer of the domain name DiamondPoint.com to Complainant is denied. Respondent's request for a finding of reverse hijacking of the domain name is also denied.Above message source domaingang