[comments] Date: Tue, 15 Aug 2000 09:37:51 -0400

[Michael Heltzer <mheltzer@inta.org>]

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