PPC links from 2005 negate reverse domain name hijacking finding

One screen capture among many is enough to prevent reverse domain name hijacking filing.

Four links on a pay-per-click landing page in 2005 prevented a UDRP panelist from finding reverse domain name hijacking.

Jakob Ruben van Gelder, proprietor of the 120-year-old Dutch diamond jewelry brand Diamond Point, filed a cybersquatting case against the domain diamondpoint.com. His business uses diamondpoint.net, which it acquired in 2015.

SyncPoint, Inc.’s predecessor registered the domain name in 2001 as a domain investment. It says it registered the domain because diamond point is a common term, and it’s also a geographic location in the U.S.

The Complainant failed to convince the World Intellectual Property Organization panelist that SyncPoint registered the domain in 2001 specifically to target the Complainant.

The domain was placed on pay-per-click landers, and many of the ads back then referred to the common usage of the domain.

However, the Complainant found one instance of links in 2005 that it said targeted its brand. Four links on that Wayback Machine capture refer to “Bijenkorf Actie”. The Complainant sells its jewelry through store-within-store locations in Dijenkorf department stores.

Panelist Andrew Lothian denied (pdf) the dispute because the Complainant didn’t show registration in bad faith. When considering reverse domain name hijacking, he said he was “troubled” by some aspects of the case:

Given the age of the disputed domain name, amounting to over two decades, the Panel is troubled by the Complainant’s selective use of the available entries from the Internet Archive “Wayback Machine” to those that it believed favored its case, with no reference to others which it must surely have reviewed, and which would have tended to indicate to it that the Respondent may not have been targeting the Complainant or its trademark directly between at least 2001 and 2005. The Complainant does not seem to have anticipated and did not address the fact that its mark is also a phrase in widespread use, both commercial and noncommercial. The Complainant might also have identified the apparent geographic use of the term “Diamond Point” in the historic page capture from February 10, 2005.

Nevertheless, he said the presence of these four links in 2005 negated a finding of reverse domain name hijacking:

Nevertheless, the Panel considers that the Complainant was entitled to see the said historic page capture as potential evidence of Respondent targeting at the material date. The entry contained four links referring in the Dutch language to the stores in which the Complainant does business, while the rest of the site was in English. However inadvertent the Respondent might claim are the inclusion of these links, the Respondent must nevertheless be held accountable for the content of its site, even if allegedly generated automatically. Consequently, the Panel finds that the presence of those links was reasonably indicative to the Complainant of the Respondent using the disputed domain name in bad faith as of 2005. Having identified such apparent bad faith use, the Complainant sought to put the Respondent to the proof as to whether an alleged intent to target the Complainant in 2005 was consistent with a similar intent in 2001, with a view to demonstrating registration of the disputed domain name in bad faith. The fact that the Complainant could not prove the Respondent’s intent in 2001 on the balance of probabilities is largely a failure of the evidence which it was able to bring to bear, not least due to passage of time.

Bird & Bird LLP represented the Complainant. No representative is mentioned for SyncPoint.