A panel of the World Intellectual Property Organisation (WIPO) has
ruled that a German broadcasting company called Deutsche Welle was
acting in bad faith when it attempted to recover the domain name
dw.com from DiamondWare, a US software developer.
The German company operates under the acronym “DW” and has
various registered trade marks in Europe and the US incorporating
the letters. However, the panel found that DiamondWare has traded
under the same acronym since at least 1994, the year in which it
registered the domain name.
Deutsche Welle’s lawyers wrote to DiamondWare demanding that the
name be transferred on the ground of trade mark infringement. The
US company replied to say that it was not currently offering the
name for sale, but would consider offers over $3.75 million.
In domain name disputes before WIPO, three criteria must be
satisfied. First, that the name is identical or confusingly similar
to a trade mark of the party bringing the case; second, that the
present owner has no rights or legitimate interest in the name; and
third, that the owner registered and used the name in bad
faith.
Deutsche Welle brought its case before WIPO arguing that,
because DiamondWare offered the name for sale, it showed that the
company
"has no personal or other legitimate
interest in holding the domain, which is obvious taking into
consideration the amount of money they are asking. Furthermore,
from the letter of [DiamonWare] one can see that [it] acquired the
domain and holds the domain primarily for the purpose of selling
it.”
The WIPO panel found that there was an attempt at “reverse
domain name hijacking”, a term that describes bad faith use of the
rules followed by WIPO and others, in an attempt to deprive a
registered domain name holder of a domain name.
It found that DiamondWare was legitimately using the name long
before the complaint by Deutsche Welle. The panel added that a mere
offer for sale of a domain name for a large sum of money is not, of
itself, cybersquatting and that DiamondWare, given its underlying
business interest, had every reason to demand a substantial sum for
the transfer.
Finally, in refusing Deutsche Welle’s claim, the panel said the
German company “knew all along that [DiamondWare] was not a
cybersqutter,” but nevertheless proceeded with its complaint.
