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.