[Random-bits] Diamond.com

[James Love]

Thanks for MF for the pointer.  Jamie


---------- Forwarded message ----------
Date: Tue, 15 Aug 2000 11:36:41 -0400 (EDT)
From: intanet-l@inta.org
To: undisclosed-recipients:  ;
Subject: (INTA) Diamond.com

On June 13, 2000, the owners of the domain name
Diamond.com filed a lawsuit against the owners of the
domain Diamonds.com in the Southern District of Florida,
alleging unfair competition and defamation.  Specifically,
the owner of  Diamonds.com published an article on the
web which analyzes the future of the B2C business model
in the jewelry industry on the web, and stated that the
owner of Diamond is "in our opinion illegally and unfairly
encroaching on our proprietary use of Diamonds.com as a
consumer site for and about diamonds."

Commentators have mischaracterized this action as a
cybersquatting action under the Uniform Dispute
Resolution Policy or under the Anti-Cybersquatting Act.
However, this is basically a trademark lawsuit involving
domain names and is essentially a cyber-turf battle for
the exclusive right to use the word diamond in the domain
name for purposes of retail diamond sales.  The fact that
a lawsuit contains a dispute regarding domain names does
not mean that the suit necessarily deals with the issue of
cybersquatting.

The unfair competition portion of the lawsuit will ultimately
turn on the issues of  whether the domains Diamond.com
or Diamonds.com are protectable service marks, and if so,
whether there is a likelihood of confusion between the
domains.

In order for either party to be entitled to trademark rights
in the domains, they will likely have to demonstrate that
the respective domains are protectable.  Since both
domains are used to sell diamonds, arguably the domains
at first blush are descriptive with regard to that portion of
the business.  If the domains are descriptive then both
parties are going to have to demonstrate that their use of
the respective domain has acquired distinctiveness.  If the
domains are in fact generic, then neither party will likely be
able to stop the other party from using their respective
domain.

Assuming the domains are protectable, then the issues will
turn on whether there is a likelihood of confusion and
which party used the domain first. In this regard,
Diamond.com was first registered by Diamond.com, LLC,
an industrial user of diamonds, who sold the domain in
1993 to a domain name speculator, who ultimately sold
the domain in May of this year to the current owner.  On
the other hand, Diamonds.com was registered in August
of 1994 and was assigned to the current owner in April
of 2000.  The issue will likely turn on which party used
the wording first and whether their use was
continuous.

INTA Internet Subcommittee on DNS Governance



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James Love, Director           | http://www.cptech.org
Consumer Project on Technology | mailto:love@cptech.org 
P.O. Box 19367                 | voice: 1.202.387.8030
Washington, DC 20036           | fax:   1.202.234.5176
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