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.

 

[MrMender]

Snapnames.com vs. Swapnames.com.
Points to consider,
1. swapnames.com domain was registered as a similar name 4 years after snapnames.com
2. Snapnames has a registered trademark in this calssification, swapnames does not.
3. Swapnames.com USPTO filing is in the wrong classification, pehaps an incompetent attorney, or perhaps to avoid the proper classification review.
4. The sniff test of protection is "similar and possibly confusing" when placed in the same classification where the names belong, swapnames.com does not pass.

If the use of the domain was for changing your last name from Smith to Jones and that was the swapnames.com use and they filed properly, I'd understand the issues with snapnames.com. But as is looks here, they walked away because this one was not worth the fight, and they knew it. I see no bully, and one has a duty, right and obligation to enforce the protections afforded by registered trademark protection status.

I'm a domain owner and having gone thru the registered trademark owner process, I get the key issue concerns of the previous post but I lean toward the registration of a unique name for development, like the new name there using. It avoids the possibility of a worse case scenario!

Kind Regards,
Bob

 

[Kenny]

Redirected to Legal Forum

 

[domainer111]

I was very sad to hear of this action by snapnames.com.

Swapnames.com clearly consistes of two common dictionary words. These words were being used in their generic sense.

Swapping as we know is common on domain threads, perhaps Snap were not quite as aware of this as domainers might have been.

I have used snapnames for years, I have never once typed in "swapnames" instead of snapnames.com.

However every cloud has a silver lining, this story at least will get the new zuho.com which looks excellent some good publicity!

 

[DNQuest.com]

Myth 1 - swapnames IS NOT a registered mark

(words only): SWAPNAMES.COM

Standard Character claim: Yes

Current Status: A non-final action has been mailed. This is a letter from the examining attorney requesting additional information and/or making an initial refusal. However, no final determination as to the registrability of the mark has been made.

Date of Status: 2007-08-01

Filing Date: 2006-12-06

Transformed into a National Application: No

Registration Date: (DATE NOT AVAILABLE)

Myth 2 - The TM registration is not for domain services..

Word Mark SWAPNAMES.COM
Goods and Services IC 038. US 100 101 104. G & S: Telecommunications services, namely, electronic transmission of data, images and documents via computer terminals; electronic store-and-forward messaging; electronic mail services, and facsimile transmission. FIRST USE: 20061101. FIRST USE IN COMMERCE: 20061101

Emphasis added by me to point out what is actually on file. Regardless if swapnames is similar or confusingly similar, swapnames did not properly protect itself with their filing. If they used the domain in accordance to their filing, they would have a better stance, but they used it in a field which they did not ask for protection.

 

[MrMender]

Myth 1 - snapnames IS NOT a registered mark

snapnames® a registered trademark, and the trademark protection also extends to the TLD's based on trademark law.

UNITED STATES DEPARTMENT OF COMMERCE
Patent and Trademark Office
OFFICE OF ASSISTANT COMMISSIONER FOR TRADEMARKS
2900 Crystal Drive
Arlington, Virginia 22202-3513

EXAMINATION GUIDE NO. 2-99
September 29, 1999
MARKS COMPOSED, IN WHOLE OR IN PART, OF DOMAIN NAMES

Generally, for domain name marks (e.g., COPPER.COM), the applicant may add or delete a TLD to the drawing of the mark without materially altering the mark. A mark that includes a TLD will be perceived by the public as a domain name, while a mark without a TLD will not. However, the public recognizes that a TLD is a universally-used part of an Internet address. As a result, the essence of a domain name mark is created by the second level domain name, not the TLD. The commercial impression created by the second level domain name usually will remain the same whether the TLD is present or not.

Example: Amending a mark from PETER to PETER.COM would not materially change the mark because the essence of both marks is still PETER, a person’s name.

Similarly, substituting one TLD for another in a domain name mark, or adding or deleting a "dot" or "http://www." or "www." to a domain name mark is generally permitted.

Example: Amending a mark from XYZ.ORG to XYZ.COM would not materially change the mark because the essence of both marks is still XYZ.

Kind Regards,
Bob

 

[DNQuest.com]

Oops, meant swapnames.com my bad ( I guess it can get confusing). The Record is for swapdomains.com which shows it is not a registered mark.

 

[MrMender]

Still a good doamin name to hold onto!

The registrant still owns the name swapnames.com, there has been no surrender of resgitration thus far and :imho: still has every right to do with it what they will, so long as they get competent advise as to be within there rights. Forwarding it to the new name was a questionable move, "basically same problem with using it". To maintain ownership and compliance it may be in there best interest to land it elsewhere, and ammend the trademark application prior to final review and publication for opposition.
Peace,
Bob

 

[Earthian]

even if swapnames.com is not a Registered Mark it is still a Trademark (more specifically a Service Mark) and its recognized for swapping names by many people ... and is not confused with SnapNames which is basically for acquiring expired (until recently) and deleted domains ...






besides , SwapNames is consisted of two generic words and trying to enforce a trademark of a two word combination to a trademark of a similar two word combination is not something that will necessarily be successful ...






similarly , if someone owned macrosoft.com and had a trademark on macrosoft for selling some kind of software that they are making (soft is a rather common abbreviation software) , do you think that Microsoft would try to get his name ? the names have certain similarities (with again only one letter substitution) but they are different ... macrosoft might not be a very good idea for selling software since Microsoft is a well-known company , but "swap" is a very descriptive generic word for swapping names and characteristically different from "snap" ...






Swapnames is not auctioning off deleted domains (or domains in general as the new service SnapNames has recently started to roll out) ... they provide a platform for people communicating and swapping their domains , which kind of naturally expanded to them asking a price instead of a swap ... so I think their Trademark ("Telecommunications services, namely, electronic transmission of data, images and documents via computer terminals; electronic store-and-forward messaging; electronic mail services, and facsimile transmission.") is relevant to the service they provide ...






how about if someone had snipnames.com and was offering a url shortening service as well as a forum (or platform) where domains where sold , would that be infringement too ? it is only one letter which is substituted again ... or how about soapnames , slapnames or swopnames (2 letters)






I think that someone can easily say that SnapNames just wants to acquire a name that is not theirs (maybe they are also thinking about offering a swapping service in the future ???) and that they are trying to use a method that would be considered as "cunning" , to say the least ... if you think that a domain infringes upon your rights , you file a UDRP ... if you are a big company and you know that you are probably gonna lose the UDRP and you file a lawsuit so as to try to intimidate the person/smaller-company ... then you are not exactly trying to play fair ...

​

 

[MrMender]

Hi Godian,

It's ironic that the initial reply to this post thread was:
Hmm, couldn't have been snapnames that sent that letter could it?

All points made are valid, relevant and well taken.

I think the crux of this is not with the UDRP the way I read it. The issue is with the use of the name not the fact that they have a website. It's simple name infringement, and the use of the name within the same calssification for which protection has been granted snapnames®. There seems to be a possiblility of some confusion :imho: to the laymen. Both companies deal in name trading, regardless if you make a mistake typing the word in like a common misspelling, which this clearly is not. But when you try to recall what business it was. And all the names you mention may have a similar problem if they try to get involved in the business of names.

By the same token that swapnames.com might have acted in good faith using the clasification they chose, one could also argue that snapnames® by virtue of registered trademark status, may already be protected in name swapping under the "AND PROVIDING DATABASES FEATURING GENERAL AND LOCAL NEWS AND INFORMATION OF INTEREST IN THE FIELD OF DOMAIN NAMES AND THE INTERNET" clause.

I doubt the USPTO would grant any a ® in the same classification, but see no issue in a not compete class. Ultimately, the ® only gives you status, you still have to litigate to enforce.

Fortunately there is the UDRP for the domain issues which allows one to set idle, be attacked by someone willing to foot the bill and win without having to defend.

Many Thanks for the opportunity to express my views.
Kind Regards,
Bob

 

[labrocca]

My personal opinion...I wouldn't have used swapnames.com as my site name. Way too close to snapnames.com and it was just calling for problems. Could he defend this ...absolutely but why bother? Snapnames is quickly going downhill and it's like having a name with fly in it..domainfly or registrationfly. Who wants bad association?

On another note I see swapnames forwards to the new domain...Zuho.com. I am iffy about the name but it's certainly more brandable than swapnames imho.

As to you snapnames...shame on you. Work with swapnames to come to terms don't bully domainers.

 

[Ronald Regging]

Is your WHOIS correct? You live in Malaysia?

Not sure why they're filing against you in US court, except to try to pull another Bodog incident, where the US court finds in their favor since you aren't likely to come to the US to defend it and force the US based registrar to hand it over.

If the domain isn't suspended (i dont know the correct term), I'd suggest moving it to a registrar in Malayasia and making Snap either come to the proper venue or file a UDRP

 

[homebuyer]

Complaint

I have read the complaint. Anybody else want to read it? I have a copy of it.

 

[DNQuest.com]

Is your WHOIS correct? You live in Malaysia?

Not sure why they're filing against you in US court

Jurisdiction

 

[Earthian]

MrMender - since the two names are different and represent different services ... I think they could co-exist without confusion from consumers ... alternatively (if distinct words/meanings like "swap" and "snap" are not considered different) , it might be rather difficult to decide when TM rights end ... eg. would a s**pnames name (2 different letters) considered as infringing too ? ... would SnapNames be able to acquire , for example , shopnames.com ? ... or if shopnames has a TM on their name should they try to acquire snapnames.com since a layman might visit the SnapNames site and then recall it as "shopnames" ?







using "AND PROVIDING DATABASES FEATURING GENERAL AND LOCAL NEWS AND INFORMATION OF INTEREST IN THE FIELD OF DOMAIN NAMES AND THE INTERNET" , which is basically for domain news , as a stand point for a swapping-names service is kind of far-stretched imo ...







regarding the UDRP as not being important on this case ... I think it is very important regarding the motives and "fairplayness" of SnapNames ... they probably knew that they would lose in a UDRP dispute (the domain is used in good faith , without any connection to SnapNames) , that's why they tried to intimidate the Swapnames owner with a lawsuit ...







I understand your points (and that they are said in good will) , but an easy way to understand who is right and wrong sometimes , is to ask yourself ... "would you do it ?" ... would you file the lawsuit against a person that has a domain (which even though it has certain similarities with your name , it is also distinctively different) upon which he has developed a service for some time now ?

​

 

[PowerUp]

I own TopSnap()com. Anyone interested in setting up a domain backorder service company to compete and put "you know who" out of business?

 

[jberryhill]

I have just briefly looked at the last few comments in this thread, and there's a lot of junk here.

First - who cares if "swapnames" consists of two common words. So does "snapnames". So does "Network Solutions", and so does "Micro Soft".... I don't even see the point in that observation. Lots of combinations of two common words are trademarks.

Second - I don't care if one is swapping names, selling names, or running drop auctions. All of these services relate to trade in domain names, are in the same general market, and directed to the same highly specialized class of consumers of domain registration services.

Third - OF COURSE one can sue swapnames.com in the United States. The swapnames.com idiots are the ones claiming to be doing business in the United States by, for example, filing their trademark registration application in the United States. If someone chooses to admit doing business in the United States, and files a US trademark registration application, I don't have to go to Malaysia to sue them, regardless of where their registrar may be.

Fourth - It is bleedingly apparent that "SWAPNAMES" is confusingly similar to "SNAPNAMES". If it is not bleedingly apparent to you, then you need to find something other than domain names with which to occupy your idle hours.

Fifth - There is nothing wrong with bringing a lawsuit. A trademark claimant can choose among any of the mechanisms available to them.

I think their Trademark ("Telecommunications services, namely, electronic transmission of data, images and documents via computer terminals; electronic store-and-forward messaging; electronic mail services, and facsimile transmission.") is relevant to the service they provide ...

Well, the USPTO certainly thought otherwise. In refusing their application (they do not have a registered trademark), the Examining Attorney pointed out that the specimen of use they provided doesn't even show those services.

But the whole point of whether they provide services other than trading in domain names is entirely beside the point that they do purport to provide domain name trading services, and one would have to be a drooling moron to consider that a different market from the various services provided by SnapNames.

If they used the domain in accordance to their filing, they would have a better stance, but they used it in a field which they did not ask for protection.

Correct. The application looks like a bullshit maneuver to construct a hokey defense.

 

[Erdy]

What would happen if swapnames had ignored the lawsuit and transfered the domain to a non US registrar?

If it was me I would rather try this strategy instead giving the domain away.

 

[DNQuest.com]

What would happen if swapnames had ignored the lawsuit and transfered the domain to a non US registrar?

If it was me I would rather try this strategy instead giving the domain away.

I wonder why domainers are portrayed in a bad light?

 

[Dave_Z]

What would happen if swapnames had ignored the lawsuit and transfered the domain to a non US registrar?

If it was me I would rather try this strategy instead giving the domain away.

That's what Bodog finally did after 2 mistakes. Third time's the charm.

Speculation at this point what'll happen (e.g. litigating party enforces decision
on .com Registry in Virginia). I'd like to believe that won't apply, but my belief
obviously won't matter if a court of competent jurisdiction decides otherwise.

 

[jberryhill]

What would happen if swapnames had ignored the lawsuit and transfered the domain to a non US registrar?

Typically, when you file a domain lawsuit, you provide a copy of the filed suit to the registrar. Under the terms of the ICANN RAA, the registrar then has to keep the domain name locked in order to prevent this sort of thing from happening.

Not everyone is stupid.

 

[verbster]

It is bleedingly apparent that "SWAPNAMES" is confusingly similar to "SNAPNAMES".

Points two and four seem to indicate that these two company domains are confusingly similar because they are used in the same general market, not because they would normally be confused side by side if outside of the general market. In other words, if you didn't know which company did what, must the names alone be confusingly similar to the degree that the specifics of the businesses don't matter? Or is it that the domain names don't need to be confusingly similar on their own, but they can be interpreted that way when both used in the same general market?

 

[modus]

You have got to be kidding me!

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.

You have got to be kidding me! What, that's it? That's all the cojones you guys have? You are a business owner, for crying out loud, learn to defend your money from bogus attacks. How can I use your services knowing you give up so easily and, when you do, jeopardizing the portion of my own business that is dependent on your services?

The law concerning trademarks in domain names is very basic and easy to understand, and the cases are being decided on case-by-case basis. Get court transcripts (available on the Net for free!) describing similar cases, how they were argued, and what the decisions were and why. Go in front of the judge yourself and fight for your dream.

In case you feel I am full of it, I alone sued Fleet Bank for $9,500 even though at the moment I was a software developer and far from being an attorney. They showed up with two managers and two attorneys, while I was there by myself. Guess what? You learn your opponent's argument, you learn the surrounding, and then you take on the fight.

The bottom line, like with everything else in life, you need to be able to look in the mirror and tell yourself you've done what you could before the things beyond your control took you down.

 

[Dave_Z]

The bottom line, like with everything else in life, you need to be able to look in the mirror and tell yourself you've done what you could before the things beyond your control took you down.

Maybe Al did before he ultimately decided to give this one up. No one's forced
to fight every fight, especially when life is short.

Choose your battles wisely.

 

[Earthian]

In my opinion , SwapNames is not confusingly similar to SnapNames when taking into account the target market of those services which is mostly domainers ... domainers can very easily descriminate between two domains (and sites) even if the only difference between them is just one letter , not to mention two different words with different meanings (SWAP and SNAP) , even if they have common letters ... one of the reasons they have acquired that ability is because a single letter change (or an "s" at the end) can result in a big difference in price (spanning from a few dollars to thousands of dollars , for some premium domains) ... I think there are many other highly specialized industries (eg. pharmaceuticals , chemicals , etc) where , while a layman might not be able to discriminate between two rather similar words , the people of the industry would very easily discriminate between them ... for example , wouldn't you be able to descriminate between "SealBoxes" and "SellBoxes" ? again it is just one letter that is different , but the different meanings help for discriminating between the two names ...


look at those names again ... being a domainer would you ever confuse the two services ?

SwapNames instantly correlates with SWAP and the act of swapping names ... while ...

SnapNames connects with SNAP/grab (or break) and with snapping or grabbing names (and that after quite some publicity and advertising)










this is one of the reasons I said that SwapNames consists of "two generic words" ... the distinctiveness of the "Swap" part that correlates directly with swapping , makes the confusion between the two sites rather difficult (and even more so for expirienced domainers) ... the second reason I mentioned "two generic words" is because SwapNames is not a slightly altered made-up word of another (TMed) made-up word (like Gougle instead of Google) , or a TMed word combined with another word (eg. SnapNamesSite.com or eSnapNames.com) which would rather easily imply a TM infringement ...










From what I understand from both the International Class and the US Class the SwapNames applied for a Trademark (Communication) , they probably originally intended the site just as a platform for domainers to communicate with each other about swapping domains ... maybe they even intended to incorporate a platform of some kind (like IM or chat) to facilitate the swaps and maybe that's why they applied for a Trademark in "Telecommunications services, namely, electronic transmission of data, images and documents via computer terminals; electronic store-and-forward messaging; electronic mail services, and facsimile transmission." ... when they filed the Trademark Application in November 2006 , probably they didn't thought that they would be confused with SnapNames which at the time was only catching dropped and expired names (SnapNames has started auctioning off other people's domains only this last month or so) ... moreover , SnapNames at the time (Nov 2006) , was not as popular as it is now (back then it wasn't even widely spread that they were acquiring NetSol's expired names before deletion , a service which led to their rise in popularity) and because SWAP and SNAP are characteristically different maybe they did not think that a domainer would confuse the two sites ...


whether they expanded to a service out of their initial intentions (communication for swapping names >>> swapping/selling) ... when they did it (in chronological connection to the Trademark Application) ... whether they thought that there would be a problem with SnapNames (which at the time was only selling domains , just auctioned dropcatches) ... are issues that only the owner of SwapNames know , but from a domainer standpoint , someone can say that they just liked the descriptiveness of SWAP and decided to develop a swapping site for domainers on it without considering that it would be confused with the dropcatchers SnapNames (Nov 2006) or that SnapNames would start auctioning off third party domains a year later which might get them closer in provided services (provided they did not intend communication-only services at the beginning or afterwards , in which case their services are even more distant) so that some domainers (a very limited number in my opinion) would confuse about the two names and services ...










lastly ... of course , SnapNames can file a lawsuit if they deem appropriate ... but I think most domainers would consider such an act as "unethical" according to usual domain industry procedures/tactics ... both because they did not file a UDRP (which they would probably lose , since Swapnamews is using the name in good faith and not in connection with (or trying to appear as) SnapNames ... and also because they tried to "strut" their legal and monetary resources in such a manner that the SwapNames owner would possibly not be able to defend himself in a court and possibly decide to give in the domain (which could be described by many as a case of "corporate overstretching" and/or "reverse domain name hijacking")


we should not forget that laws were made to protect the people and not to allow companies to take advantage of people "legally" ...

​

 

[DNQuest.com]

"Confusingly similar" is also part of the criteria.. confusingly. Even someone who make s a living on the legal aspect of domains said i is confusingly similar. But you are bent to yell load and make no real sense. you obviously haven't read others posts in this thread because you keep rehashing. What you fail to understand is how the domain is actually being used. Intent means nothing, usage does and here, he screwed up.

btw- do we need to write a book with each response? to be honest, I grew board.