Swapnames.com lawsuit

[jsp]

If not posted already, received this email from SwapNames.com. apparently they will be forced to change their domain name:

"My name is Koay Al Vin and I am the president of SwapNames.com. Please allow me to make a very important announcement regarding SwapNames.com and your SwapName member's account. On the 8th of August 2007, SwapNames Inc. was slapped with a trademark infringement lawsuit for using the domain name: Swapnames.com. Even tough we are absolutely certain that the allegation is baseless; we do not have the finances to hire an attorney to defend our case in court. As far as we know, a descriptive and generic phrase such as "swap names" cannot be infringing in anyway. However, to defend the lawsuit will certainly bankrupt our company, just from the hefty legal expenses. As a very new start-up venture with no financial backing, it is a huge blow to our dreams. We will have to surrender our most valuable property which is our domain name, to avoid a default judgement by the court. SwapNames.com will cease using it's domain name on Thursday, 4th October 2007. We will be relaunching a new website using the domain name www.Zuho.com immediately thereafter. The official launch date for Zuho.com will be Tuesday, 9th October 2007. Zuho.com will have all the existing features of Swapnames and a major upgraded feature which allows all members to post "wanted swap" offers. Members will also get to search all ads posted by other fellow members. This will allow you to make very targeted swap offers and increase the chances of succesful swaps. All existing data in your present Swapnames.com account will be transferred over to Zuho.com and you will not have to re-enter anything at all. Your login details to Zuho.com will also be the same as before. We would like to apologise to you for all the inconveniences and just like the phoenix which rises from the ashes, we are determined to make Zuho.com an even better domain swapping marketplace compared to Swapnames.com. Thank you very much for your understanding and Zuho.com hopes for your most valued support very soon. With warmest regards, Koay Al Vin President, Zuho Inc.

 

[verbster]

What you fail to understand is how the domain is actually being used. Intent means nothing, usage does and here, he screwed up.

Are you saying you believe the domain was registered and used in bad faith?

Do you think he fails the standard litmus test:

1. that the trademark owner owns a trademark (either registered or unregistered) that is the same or confusingly similar to the registered second level domain name;
2. that the party that registered the domain name has no legitimate right or interest in the domain name; and
3. that the domain name was registered and used in bad faith.

 

[DNQuest.com]

If you read the whole post I responded to, he is saying his intent. i countered with actual use. Are you saying he never heard of snapnames.com?

 

[verbster]

So, without intent, he must of inadvertently registered and used swapnames.com in bad faith.

Yes, I've read the whole thread; perhaps closer than you.

 

[IAmAllanShore]

Analogous: CarFax.com and CarMax.com?
-Allan :gl:

 

[Earthian]

everybody can have their own opinion ... when I first saw this thread , I was concerned about a fellow domainer and NPer who had an idea , got a name , developed a site ... and suddenly saw a company sueing him so as to intimidate him to give in the domain because they thought they might lose a couple of customers (who might confuse SWAP with SNAP) ... well , I think that the two names (even if in first impression they might seem similar) they are characteristically different (especially to domainers) because of their meanings ...






regarding intend , it was mentioned mostly in conjuction with their Trademark Application ... though their possible initial intention (swaps or possibly communications for swaps) together with the intrinsic meaning of the word "swap" can basically show that they were not trying to infringe on SnapNames (strictly dropcatchers at the time)

they have rights to the name , it is discussable whether the name can be confusing and they are using it in good faith ...






so you mean you would sue them to take their name , if you were a lawyer at SnapNames ... that you would ask for the name to be transferred , if you were in the panel of a UDRP ... or that you would decide in favour of SnapNames , if both parties could defend themselves with rather equal resources in a court ... I wonder if SwapNames was a Microsoft service , would they sue ?

​

 

[Erdy]

The name being confusingly smillar is just one of the criteria in UDRP. Another criteria is using or registering in bad faith. This clearly was not the case.

I strongly believe snapnames could never get this domain via UDRP if there was any kind of defence by the respondent. This is exactly the reason why they didn't follow UDRP route.

Some people are too obsessed with the idea that the name is confusingly smillar. You know what, OK, it is confusingly smillar. So what? Still it was registered and used in good faith.

Because swapnames is now forwarded to the current site it shows the owner has some control over it. It is likely that the the domain was and is not suspended by godaddy and the owner has still a chance to transfer it out.

 

[Dave_Z]

I wonder if SwapNames was a Microsoft service , would they sue ?

Maybe. But is Microsoft that stupid when it comes to this sort of thing?

Still it was registered and used in good faith.

That is what's being debated in a court of law. Unfortunately, Al stands a big
chance of losing this since he's chosen not to dispute it.

If he's able to transfer it out to some non-US registrar before Go Daddy locks
it, well...we'll see how far Snap will go. And it's fine not to do business with
Snap whatever the results of this dispute will be.

 

[Earthian]

in general it is advisable that a company uses a unique name to identify its services ... but in the modern world , that there are so many brands , there is the possibilty that two brand names can "come" close to each other lexically , or start at different fields and through expansions come closer market-wise ...

but , especially if the meanings are specific and different (like in this case "swap" and "snap") I don't think that one company should try to "eliminate" the brand name of the other company or try to take their domain name ...

and ever more so not by using a method that would appear as "unethical" to most people (like in this case knowing that a UDRP would probably be decided against them , trying to "intimidate" the smaller company with a lawsuit)







since Microsoft is quite an innovator (and a new product might expand in many different fields afterwards) they might have chosen a more "made-up" word (though SwapNames does have its merits in terms of descriptiveness) ... but , how about if Microsoft bought a company that had SwapNames amongst its brands , do you think they would not buy the company because of the discussed possible legal issues ? ... or do you think SnapNames would in that case sue SwapNames ? ... I think it is rather obvious that SnapNames does try to take the name because they think it infringes their trademark (consider what a UDRP panel would say) , but because they think they can "intimidate" the owner to give it in ...

​

 

[PowerUp]

I don't see how the existence of swapnames can hurt snapnames financially. I don't even see how the brand of snapnames can benefit swapnames. They are both different businesses even though they cater to the same market. You can't backorder a domain at swapnames. Neither can you trade domains at snapnames.

 

[DNQuest.com]

If you read my responses closely, not once did I say he is a squatter or what he did was willfully wrong about what he was doing. I am going by an unbiased view of facts and keeping personal agenda out of it unlike many domainers are sometimes incapable of doing. I am also going by previous cases I read to try to establish how it would apply here. Here is what I see:

A name that could conceivably be concidered "confusingly similar", even a legal expert said as much
Operates in the same field and smae services with an establish company of a similar name that does have a registered mark.
Filed for a registered mark, but is usaging the domain that does not come under the catagories filed.
States his domain is the the swapping, buying and selling of domain names.

Now, if you uctually want my true personal opinion, which I rarely reveal. he may have set up the company with good intentions, I also believe he did some things incorrectly and doesn't seem to be focused on a well laid out business plan (maye he got some bad advice? like, "it is a 1 letter difference go ahead and do it"). Many of the arguments here are fluff (data transfer??!?). Personally, I would have skipped UDRP because I do not believe his intentions were to squat. I would have filed in court to enforce my trademark of snapnames and argue confusingly similar. To support that fact, I got the names mixed up on this very thread where I meant one name and typed the other.

Sometimes people need to be realistic and keep their passion out of the equasion

carfax= get a "car history" report
carmax= selling cars

They are not competing companies. See the difference? Though carfax does offer a car search, but they do not sell the cars.

 

[mulligan]

Choose your battles wisely.

Of all the shite I have read in this thread this has filtered through to the top and is wise advice for all who dare to tread ..

 

[Earthian]

so basically you don't think is a squatter , you think that he may have set up the company with good intentions and you don't think he was willfully wrong at what he was doing ... but still you say that you would sue him to take his domain which basically a different name than yours , it is not the .net or another extension of your exact name , it is not a small variation (or typo) of your name (eg. a random letter switch) , it is a completely different word (SWAP) with a completely different meaning that you said you understood the reasoning for its registration (which was made with good intentions without an attempt to infringe on your TM) ... and you don't think that is "over-stretching" ? don't you think that you would be trying to mess a little too much with another person's business who not only did not try to mess with yours but you know he had no intention to mess with it ...





"electronic transmission of data, images and documents" and "electronic store-and-forward messaging" were mentioned in the case that the owner of SwapNames had initially intended for just a communication platform (eg. something like a PM , IM , chat , etc) for domainers to swap domains , which could be considered as a rather different service from the dropcatching service SnapNames was providing at the time ... and that together with the different (and descriptive) part of the name (SWAP) it would logically not be considered as infringing with the SnapNames TM ...





carfax not only offers a search for used cars , which brings up hundreds of specific used cars from carfax dealers with instructions on how to buy them , but surely you must consider that that service (the listing of used cars for sale) is on the general car trading market (or the more specific used car trading market) that carmax operates in ...





it is rather logical that since the commodity is the same in a market (eg. cars , names , etc) some names of some companies will be close lexically to each other ... as long as the meanings of the different parts of the names are different , I don't think that one company should try to "eliminate" the other and especially with "tricky" ways ...

​

 

[DNQuest.com]

so basically you don't think is a squatter , you think that he may have set up the company with good intentions and you don't think he was willfully wrong at what he was doing ... but still you say that you would sue him to take his domain which basically a different name than yours , it is not the .net or another extension of your exact name , it is not a small variation (or typo) of your name (eg. a random letter switch) , it is a completely different word (SWAP) with a completely different meaning that you said you understood the reasoning for its registration (which was made with good intentions without an attempt to infringe on your TM) ... and you don't think that is "over-stretching" ? don't you think that you would be trying to mess a little too much with another person's business who not only did not try to mess with yours but you know he had no intention to mess with it ...
​

Again, you are missing the point, snapnames is protecting their TM, and court is the best avenue. This is a trademark case NOT a cybersquatting case. But it will seem similar. I do not believe snapnames is overreaching at all, I do consider the names "confusingly similar" and that is his downfall.

As far as mentioning his intent, well, he never set up the site as intended use, so basically his intent means nothing, it is how he actually used it. For the most part, the intent is just to blow smoke to mask the real usage of the domain, which in this case is competing services.​

 

[Earthian]

everybody can have their opinion ...




I see a domainer trying to set up a site and a company trying to "use muscle" to "intimidate" someone so as to take something that is not theirs ... and while they know they would lose in UDRP (which is not only for cybersquatters)




you see a company trying to enforce their TM with the method they think is more appropriate ...




in my opinion , the fact remains that the name because of its meaning and correlated activity (swapping) can easily be discriminated from SnapNames (especially if it was used as two different words as in "SWAP NAMES")




(as mentioned before intent was mentioned mostly in conjuction with the Trademark Application and also so as to see the possible motives of the owner of SwapNames)

​

 

[PowerUp]

A name that could conceivably be concidered "confusingly similar", even a legal expert said as much

Who else except Snapnames is confused? Man, if the person working at Snapnames can get confused about the 2 names, then he should quit the domain industry.

Operates in the same field and smae services

Same field yes, but same services?

with an establish company of a similar name that does have a registered mark.

Show us how swapnames financially benefits from snapnames established presence or trademark.

Filed for a registered mark, but is usaging the domain that does not come under the catagories filed.
States his domain is the the swapping, buying and selling of domain names.

I remember alot of you said that even if the name "xxxxxxx" is not filed as a registered trademark, the fact that it is in usage will imply that this person or company will have trademark over the name.

Now, swapnames may have filed its trademark in the wrong category, but it still doesn't take away the trademark claims that it has over the OTHER correct categories that it hasn't filed yet. It's like someone having a TM claim but hasn't filed the register TM yet.

 

[DNQuest.com]

Who else except Snapnames is confused? Man, if the person working at Snapnames can get confused about the 2 names, then he should quit the domain industry.

As I mentioned, i got the name wrong in this thread becuase they were confusingly similar. I guess I should leave the business? You say a guy at snapnames, but what about the public??

Same field yes, but same services?

an online marketplace for domain name owners to actively swap, buy or sell their domain names This was from the swapnames "About Us" page... Buy and selling names, wouldn't that be what snapnames offers. Yes a drop service, but none the less, buying and selling domain names.

Show us how swapnames financially benefits from snapnames established presence or trademark.

It about protecting their mark, that is their motivation, to make sure there is no marketplace confusion.

I remember alot of you said that even if the name "xxxxxxx" is not filed as a registered trademark, the fact that it is in usage will imply that this person or company will have trademark over the name.

Yes, as long as it is not challenged, that is correct. Snapnames is challenging that which is why they are going through court and not UDRP.

Now, swapnames may have filed its trademark in the wrong category, but it still doesn't take away the trademark claims that it has over the OTHER correct categories that it hasn't filed yet. It's like someone having a TM claim but hasn't filed the register TM yet.

Unless you are part of swapnames, you have absolutely no idea if they filed in the wrong catagory or if this was thier initial intentions. So you cannot say one way or the other. As far as applying for under the correct catagory, well, they took the initiative in filing for a registered mark and thier actions shows there intentions, they diviated from that, whether intentionally or unintentionally. In business, if you do not properly do your filings, you could find yourself in trouble. Well, the facts show something isn't right.

I made my personal feelings known on this issue, he was either careless, uninformed, received bad advice, or any number of things, but what is showing is not helping him.

 

[Devil_Dog]

Looks like snapnames now owns swapnames.com....

http://whois.domaintools.com/swapnames.com