According to Vegasinc.com, the dispute over the domain name Switch.net which was won on Namejet.com for $3,700 on November 18th which had a UDRP filed against in 2 days after acquisition by a Swiss company, is now the subject of a federal lawsuit filed under the Anticybersquatting Consumer Protection Act.
“Switch Communications Group LLC, operator of a big data center in Las Vegas, sued a Canadian man on Wednesday in what it calls a trademark dispute.”
“Switch charged in the suit that Dorian Banks in Vancouver, British Columbia, infringed on Switch’s trademarks when Banks registered the switch.net Internet domain name last month.”
“Besides the trademark claim, the lawsuit also alleges that Banks violated the federal Anticybersquatting Consumer Protection Act because Banks had a “bad faith intent to profit from registering, trafficking in or using a domain name or mark that is either identical or confusingly similar to a distinctive mark” or a famous mark.”
“Switch charged in the lawsuit that after registering the switch.net name on Oct. 15, Banks contacted the Las Vegas Switch company and offered to sell it the domain name for about $3,700.”
“While plaintiff evaluated the offer to negotiate the purchase of the domain name, defendant threatened to sell the domain name to another entity if plaintiff did not hurry and open escrow to buy the domain name,” charged the lawsuit filed in federal court in Las Vegas by attorneys at the Las Vegas office of the law firm Greenberg Traurig LLP.
“Switch in the suit asks the court for a restraining order requiring Banks to stop using Switch Communications’ names and trademarks and that the domain name registrar transfer the switch.net name to Switch Communications.”
“Banks, in an interview, denied the allegations of trademark infringement and cybersquatting.”
“He said the switch.net domain name was locked down after the auction because of a protest by a third company in Switzerland called SWITCH http://www.switch.ch/, which offers services to Swiss universities and Internet users.”
“Banks said that after the Swiss company objected to his registration of the switch.net name, he offered to sell it to the Las Vegas company for what he paid for it.”
“That way, he said, the Las Vegas company could try to gain control of the name and he could quit worrying about the dispute.”
“Asked about being branded in a lawsuit as a trademark infringer and cybersquatter, Banks said: “It really bothers me.””
The story which was pretty strange from the start where the auction winner which was initially facing just a UDRP and potential loss of the domain, is now facing $100K fine plus the costs of defending a federal lawsuit which can be quite substantial.
adam says
November 10, 2011 at 10:00 amFor me switch is very generic.
What I cannot understand is how anyone can be domain investor if buying domains to sell later is considered as bad faith. If you have any common, generic name its almost sure there are companies which use this name and have trademark.
Can anyone explain that to me please ?
Michael H. Berkens says
November 10, 2011 at 10:10 amAdam
If we take the facts as alleged then the domain investor, then they contacted the trademark holder and offered to sell them the domain.
So if you call a trademark holder and offer a domain for sale in which they have a TM no matter how generic its possible they may turn around and sue you.
Tim Marland says
November 10, 2011 at 10:29 am“So if you call a trademark holder and offer a domain for sale in which they have a TM no matter how generic its possible they may turn around and sue you.”
Great response!
Acro says
November 10, 2011 at 10:52 amUnethical, yes. Illegal, no. From my understanding, Mr. Banks wanted to recoup his investment, but in doing so he opened up more litigation against him. That’s why it’s a good idea to request a disclosure of any pending litigation when buying a domain. This way, should something happen, the seller is held liable for potential perjury.
Dave Zan says
November 10, 2011 at 11:14 amIf those parts are true, then he’s definitely toast.
UDRPtalk says
November 10, 2011 at 11:50 amSince he was only seeking his out of pocket cost, I think the court will rule that the ACPA doesn’t apply.
BrianWick says
November 10, 2011 at 11:54 amSwitch Communications (SwitchNAP) is not even regional – just in Vegas – making there SWITCH TM possible not enforeable ???
They filed for their SWITCH trademark only 3 months ago on August 11th, 2011 and first used the term in 2003.
The USPTO also show countless other SWITCH TMs
Sounds more like posturing against all the other SWITCH TMs and Dorian Banks is just collateral damage regardless of what he did , did not do or contacted.
Ron says
November 10, 2011 at 12:02 pmCisco could take this domain, along with 1000 other companies in the world, Switch is so generic, was the name of a movie not to long ago, owner got himself into a pickle on this one.
Tier 1 Development says
November 10, 2011 at 12:27 pmI’m not seeing anything under the USPTO for “Switch” that applies to this company. There is a TM application for “Switch IC3”. It’s going to be published for opposition in December.
This guy messed up by going to the TM applicant. It’s opened him up for UDRP.
But I think this seems more like a case of someone making a mistake and less of someone domain squatting.
That being said, someone should inform him that he could form a new LLC called Switch Company, Switch Solutions or even Switch Banks. Then file a TM himself for “Switch Company” and file an opposition to the Vegas companies TM application. That might get them to reconsider how aggressively they’re pursuing him. It’s a costly process for the company defending their application.
I get that big companies are tired of squatters, but this is too aggressive. The Vegas company has a TM application in process. It’s for “Switch IC3”, not for “Switch”. The reason being that the days of the USPTO granting TM’s for generic terms are over. So they didn’t bother to try to get a TM on something so generic.
The domain owner bought it on drop for $3,700 and then obviously wanting to avoid litigation offered to sell it to them for what he paid, which is fair.
The Vegas company should accept that offer and drop the suit or Dorian Banks should lawyer up call BS on their TM application and go after them for damages.
Never just roll over and take it because some giant corporation (or small vegas ISP) is breathing down your neck. The little guy has got to stand up for himself every once in a while.
BrianWick says
November 10, 2011 at 12:31 pm@Tier 1:
Below is the SWITCH TM application –
But what we are really talking about here – is you only get as much justice as you can afford.
Word Mark SWITCH
Goods and Services IC 038. US 100 101 104. G & S: Providing telecommunications connections to the Internet; providing telecommunications services, namely, electronic, digital and wireless transmission of video, voice and data; local and long distance telephone services. FIRST USE: 20031130. FIRST USE IN COMMERCE: 20031130
IC 042. US 100 101. G & S: Colocation facility development services, namely, designing, building and operating secure environmentally-controlled facilities and technical monitoring for the computers and telecommunications equipment of others and providing secure environmentally controlled facilities and technical monitoring of computer and telecommunications equipment for business continuity, telecomputing, cloud computing, and disaster avoidance and recovery. FIRST USE: 20031130. FIRST USE IN COMMERCE: 20031130
Standard Characters Claimed
Mark Drawing Code (4) STANDARD CHARACTER MARK
Serial Number 85407557
Filing Date August 25, 2011
Current Filing Basis 1A
Original Filing Basis 1A
Owner (APPLICANT) Switch Communications Group LLC AKA Switch LIMITED LIABILITY COMPANY NEVADA Switch Legal 7135 S. Decatur Blvd Las Vegas NEVADA 89118
Attorney of Record Samuel Castor
Prior Registrations 3217279;3547909;3984966;AND OTHERS
Type of Mark SERVICE MARK
Register PRINCIPAL-2(F)-IN PART
Live/Dead Indicator LIVE
Distinctiveness Limitation Statement As to SWITCH; SWITCH; SWITCH
James says
November 10, 2011 at 1:00 pmSounds like both of them want a cheep domain upgrade. switchnap.com!! come on for a business that has armed guards great you when you arrive, they can afford to pay for a better domain.
Yes he’s an idiot for calling switch communications, but the fact that he is getting sued by multiple people for squatting. Can he just play each one of them off of each other in court? File paper work proving that by getting sued by both parties is proof that they domain is in fact generic.
What are your guys thoughts?
todaro says
November 10, 2011 at 1:04 pmthis just goes to show… we need more lawyers in america. otherwise we wouldn’t be falling behind.
Michael H. Berkens says
November 10, 2011 at 1:11 pmSean
“”Never just roll over and take it because some giant corporation (or small vegas ISP) is breathing down your neck. The little guy has got to stand up for himself every once in a while.”‘
Problem is its going to cost the little guy as LOT of money to defend it.
Call any reasonably sized law firm and ask them what type of retainer they want to defend this action in a federal court.
Your lucky to find anyone to take the case without at least a $25K retainer.
The cost of defending a Federal lawsuit can easily and quickly run into the six figures.
So the practicality of the situation are
1. do you have the money to mount a defense?
2. Is the asset your protecting worth the cost of the defense?
The 1st is a matter of the little guys finanical ability.
The 2nd is a business decision.
Do I spend $100K to defend a suit for a domain worth $10K?
“”The Vegas company should accept that offer and drop the suit or Dorian Banks should lawyer up call BS on their TM application and go after them for damages. “”
Sue for damages based on what?
What would you sue the company for suing you?
Attorney Fees are generally not recoverable by the winner against the loser unless there is a law that calls for it
The ACPA only provides attorney fees to the winner (the TM holder) I do not believe it provides for the defendant to receive its fees if it wins
Tier 1 Development says
November 10, 2011 at 1:54 pm@MHB
They don’t have any TM yet, so would the ACPA rule still apply? I believe that if Mr Banks made some moves even if it were “posturing” he might not be facing this suit.
I honestly think everyone should avoid litigation at all costs, but if you’re facing a suit in federal court it might be a good time to think of taking some kind of action.
In general I believe that domain owners who get bullied by corporations with their sights set on taking someones domain should look for ways to combat them. If that’s through legal representation or on their own. A lot of these issues can be handled outside of court rooms.
You are absolutely right that if a domain is not worth defending it’s a loss any way you look at it. To spend $50k to keep a $5k domain isn’t a win any way you look at it.
For anyone that’s interested a great free site for good information on UDRP, TM Law and WIPO can be found at http://www.WIPODefense.com.
Tier 1 Development says
November 10, 2011 at 2:06 pm@ Brian Wick. I don’t think they’ll get the TM for “Switch” it’s too generic and especially regarding the application for the following.
“IC 042. US 100 101. G & S: Colocation facility development services, namely, designing, building and operating secure environmentally-controlled facilities and technical monitoring for the computers and telecommunications equipment of others and providing secure environmentally controlled facilities and technical monitoring of computer and telecommunications equipment for business continuity, telecomputing, cloud computing, and disaster avoidance and recovery.”
If they’re awarded that TM it might give them the rights to go after anyone in the same industry who uses “Switch” in their company name. Or in their advertising. Do a Google search for ISP Switch and see how many large companies are using “Switch” in their ads and even within their site url (structure).
Unless there’s a ton of major companies “asleep at the wheel” along with someone at the USPTO who rubber stamps this application without really reviewing it well I don’t think there’s a snowball’s chance in hell of them getting it.
I think it’s pretty telling that they first applied for a TM on “Switch IS3” and then just recently (as they’re now going to take Mr. Banks to federal court) applied for the TM for the generic “Switch”
IMO, this application is part of a well executed scare tactic. And I’d say it’s working.
At Tier 1 Development, we have a Domain/TM/IP Law attorney on staff. We also have another attorney we work with on more complicated IP issues involving patents. As much as I would like to get involved in helping defend Mr. Banks we’re not taking on new clients at the moment.
I wish him the best of luck though.
BrianWick says
November 10, 2011 at 2:34 pmAny reasonable court I feel would all but throw this out – the key is affording that “justice”.
There have been numerous cases where a court could not see exclusive right in a Trademark – and as a result bad faith was irrelevant – that is not the case with interpretations of UDRP where any rights in the trademark (element#1) open up a pandora’s box of bad faith treats for the panel to feast off of.
BrianWick says
November 10, 2011 at 2:38 pmMore-
The point being UDRP does not take into account the 14th Amendment of equal access – where a true interpretation of ACPA does meaning, for example, how can pepsi get the domain they feel they have rights in simply because the “bad guy” had 10,000 .com’s, yet coke could not get coke.com because a 14 year old kid reserved it and that was his only domain.
Michael H. Berkens says
November 10, 2011 at 3:00 pmI think we all agree that UDRP reform is badly needed.
Unfortunately TM interests think so too, and next year when the issue is opened our industry is still only going to have a few people fighting for the domain holders side, most notably Phil Corwin of the ICA and Elliot Noss of Tucows
scrivener says
November 10, 2011 at 5:37 pmthe easy answer here is the seller goofed by not checking to see if his buyer had anything pending at the uspto. if the buyer is spending money to resgiter a tm, he sure as heck is not going to be interesting in buying domain names similar to that mark.
reality check: tm’s and patents are rights to sue. that’s what they are, plain and simple.
the potential buyer might not have an a tm issued when the offer of the domain name was made, but surely they had some entries in the relevant intellectual property office database. and the seller should have looked for those.
can you imagine a lawyer at an aggressive “sue first, think later” law firm as the kind ict companies prefer, or even a lawyer who is working in-house at the company, advising the company to purchase a domain name that is almost a direct match of a tm he’s in charge of registering for them? why would he do that?
the tm is a right to sue. the company is trying to obtain the right to sue others for using a mark. it’s not interested in buying domain names at inflated prices.
moreover, even if our imaginary lawyer thought this was a smart thing to do with a switch ic3 tm registration pending, he gets nothing from it. it fails to justify billable hours the way that registering the tm or filing an acpa suit do.
UDRPtalk says
November 10, 2011 at 8:07 pm@Scrivener – There is no “inflated price” scenario here since the seller was only seeking his out of pocket cost.
Dave Zan says
November 10, 2011 at 10:32 pmACPA also covers common law/unregistered trademarks. Trademarks arise from usage, more so if it can be demonstrated.
Personally, I think some folks are rather caught up with the generic thing. Switch may be a generic word, but so are Shell…Tide…Head and Shoulders…Brothers…even Windows which are also used commercially as trademarks.
Just because you see a generic, common word doesn’t really make it so for any other context than what it’s generic or descriptively known for. I don’t know, though, if Switch is arguably descriptive for something technical like what Switch Group applied for.
BTW, found a copy of the lawsuit:
http://ia700707.us.archive.org/35/items/gov.uscourts.nvd.84344/gov.uscourts.nvd.84344.docket.html
Interesting, to say the least.
Tier 1 Development says
November 11, 2011 at 1:35 pmFrom what I’ve been told by a number of people, the USPTO isn’t giving out trademarks for generic terms easily. The companies you mentioned, obviously they’ve been around for a very long time. Give me some examples of companies launched in the last three years with very generic TM’s.
The issue is how aggressive the patent trolls have been, they don’t want the same crap happening with TM’s. Even more interesting is that a lot of IP attorneys are telling potential clients that even if you own a generic .com for example Food.com, there’s still a good chance that they wouldn’t approve your application for a TM on Food.com.
It’s concern over where the line will be. Will a TM for Food.com allow them to go after Foods.com, HealthFood.com etc. Then what do you do when someone has a TM for the singular term and then the guys with the plural want one too. I know of a few examples where big companies have been turned down.
I’d put money on the TM on “Switch” getting rejected. Plus the scope of the TM is so broad, it really would give them the ability to go after a lot of competitors.