PARTIES' CONTENTIONS:
COMPLAINANT:
The Complainant submits that the disputed domain name is confusingly similar to its trade mark and says the test for confusing similarity typically involves a side-by-side comparison of the domain name and the relevant trade mark in order to assess whether the mark is recognizable within the disputed domain name; this may include a more holistic aural or phonetic comparison of the complainant’s trademark and the dispute domain (see WIPO Overview 3.0, at 1.7). Multiple prior UDRP panels have held that phonetic similarity with the relevant trademark is sufficient to find a domain confusingly similar, especially when one considers that consumers might unintentionally type the phonetic version of the trademark shown in the disputed domain when looking for the complainant’s brand (see WIPO Case No. D2011-1355 – groundforcepumps.com; WIPO Case No. D2006-0020 – mirival.com). The distinctive part of the disputed domain name is phonetically identical with the Complainant’s trade mark, at least when pronounced in standard English: “you” is pronounced in an identical manner to the letter “u”, while the term “switch” appears both in the disputed domain name and in the trade mark. Given that the .biz ending, like all other gTLD endings, is generally irrelevant to the assessment of confusing similarity (see e.g. WIPO Case No. D2006-0561 - playboyatthepalms.com), the disputed domain is confusingly similar to the Complainant’s mark.
The Complainant submits that the Respondent has no legitimate interest in respect of the disputed domain name. Firstly, the Respondent has, to the Complainant’s knowledge, neither used nor made demonstrable preparations to use the disputed domain name in connection with the bona fide offering of goods or services. The disputed domain name is currently used to automatically redirect visitors to the www.uk-wholesale.com website, which in itself is used for legitimate commercial purposes. The disputed domain name is thus not directly used for the offering of goods or services. However, should the Panel determine that the fact that the disputed domain name redirects to a domain that in turn is used for the offering of goods and purposes means that disputed domain name is itself used for this purpose, the Complainant maintains that this use is nevertheless not bona fide. The services offered at uk-wholesale.com consist mainly of reselling telecom and broadband services to business customers located in the UK. These services fall squarely within the list of services for which the Complainant’s trademark is registered in Nice class 38, namely “provision of telephony services” and “Internet service provider facilities, broadband”. It follows from the nature of the UDRP process, which is intended to provide a simplified procedure for trademark owners to remedy bad faith domain name registrations, that a bona fide offering of goods and services cannot be found where an intent to exploit a complainant’s mark can be inferred from the fact that there is a complete overlap between the goods or services promoted through the domain and the complainant’s trademark registration (see e.g. WIPO Case No D2001-1021 – brucetrail.com, where the Panel cited Nutrisystem.com, Inc. v. Easthaven, Ltd. (sweetsuccess.com), CPR Case No. 012 as authority for the position that a complainant’s trade mark rights cannot bar a respondent from using a domain incorporating that mark for commercial activities that are different from those pursued by the complainant). It is thus unsurprising that multiple UDRP panels have considered that a respondent will be unable to demonstrate rights or legitimate interests where the respondent is using the domain name to sell goods or services intentionally competitive with the complainant (see e.g. WIPO Case No D2011-0312 – maharajas-express.com; WIPO Case No D2010-0203 – cathkidston.net). Given that the services sold via the disputed domain name in the present case are directly competitive with those of the Complainant, the Complainant submits that no legitimate interest can be claimed by the Respondent.
Further, the fact that both Complainant and Respondent are located in the UK means that UK law concepts may be relevant to the Panel’s decision (see WIPO Overview 3.0 at 4.15). Under Section 10(2)(b) of the Trade Marks Act 1994, a trade mark registered in the UK is infringed when a sign similar to the trademark is used, without the consent of its proprietor, in a confusing manner and in connection with goods identical to those for which the trademark is registered. The use of the disputed domain name, which was first registered in 2007 (5 years following the registration of the Complainant’s mark) for the provision of telecommunications services is thus likely to constitute an infringement of the Complainant’s mark under UK law. Previous panels deciding under the UDRP have repeatedly held that a deliberate infringement of another’s trademark rights does not entail a bona fide offering of goods or services (see e.g. WIPO Case No. D2016-0725 - segawayboard.com; WIPO Case No. D2014-0236 – tigrismed.com; WIPO Case No. DTV2007-0003 – oorah.tv), and the Complainant submits that the Panel should follow this reasoning in the present dispute.
The Complainant is not in possession of any information that would suggest that the Respondent is commonly known by the disputed domain name, and any notion of the domain being used for non-commercial fair use must be rejected since the use of the domain is clearly commercial in nature.
The Complainant submits that the disputed domain was registered and is being used in bad faith. As mentioned above, the disputed domain name was registered in 2007, 5 years after the registration date of the Complainant’s trademark. The Respondent is located in the UK and the domain is furthermore being used to promote telecommunications services to UK businesses consumers. This suggests that it is highly likely that the Respondent was aware of the Complainant’s rights when the disputed domain name was registered, with the likely motive of benefiting from the reputation and recognizability attached to the Complainant’s mark, well known amongst a substantial portion of the UK public.
That the disputed domain name was registered in bad faith is supported by the fact that the use made of the domain since its registration is clearly recognizable as bad faith use. Paragraph 4(b) of the Policy provides that bad faith registration and use may be found where the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent's web site or other online location by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website or location in question. The Complainant submits that the Respondent’s intent to profit from Internet user confusion for commercial gain can be inferred, on a balance of probabilities, form their use of the disputed domain to drive web traffic to uk-wholesale.com (see e.g. WIPO Case No D2010-0415 – mylondon2012.com). As was referred to above in the discussion of the first UDRP element, the disputed domain name is confusingly similar to the Complainant’s trademark from a phonetic perspective, meaning that consumers looking for the Uswitch brand in the .biz gTLD may mistakenly type in “youswitch.biz” due to its phonetic similarity. The fact that consumers may realize that the domain is not affiliated with the Complainant upon being redirected to the uk-wholesale.com site is not relevant for the purposes of the Policy (for this established view see e.g. WIPO Case No D2006-1134 - 辉瑞.com, citing FANUC Ltd v Machine Control Services, Forum File No FA000200000093667). The web traffic generated by the confusion inherent in the disputed domain is diverted to the uk-wholesale.com website, which benefits as a result. That the automatic redirection of web traffic to uk-wholesale.com would result in financial gain to the Respondent is a reasonable inference the Complainant invites the Panel to make.
The Complainant is unaware of any alternative justification for the Respondent’s use of the disputed domain, which leaves registration and use in bad faith as the most likely explanation for the domain on a balance of probabilities.
RESPONDENT:
The disputed domain name <youswitch.biz> was registered on 9 December 2007. The main use of the domain name has never been for a website, the purpose was to point the IP addressed for the Yolanda Origin Unified Switches to a server in the data centre. In addition to providing a constant email domain name. The only meaningful use of the website was a recruitment campaign for staff to work alongside a company that supplies our Unified Switches. The Respondent does not and has never directly sold to consumers as our audience is communication providers like UK Wholesale Direct LTD and British Telecom, who use the equipment which we support and maintain. The disputed domain name has been using in good faith by the Respondent for 15 years.
This matter is extremely prejudicial. The Complainant tried the same stunt in 2009 and a compromise was reached which meant we had to change our company name but keep the domain name. We defended ourselves at the time and although we vigorously denied that it infringed their trademark we agreed that we would change the company name to My Switch LTD on the understanding that we would retain the domain name YOUswitch.biz as it was very important to the business for both emails and the IP address routing of the YOU switches. We see their complaint as harassment by a predatory large corporate throwing its weight around. For the claimant to now not accept this compromise and 13 years after the agreement was made and we upheld our end of the deal by changing our company name to My Switch Limited (which we feel is wrong that we should have had to do, the industries are not the same and there is zero confusion) is unfair, wrong and in bad faith.
We are only a small business and both me and my partner are based in the UAE. We do have the legal correspondence from USWITCH and our response and compromise from 2009 as this was done through paper post which we retained in a storage file. This file is currently stored at a storage unit within the UK only me and my partner have access to this and we can’t travel to the UK for the next 60 days due to our business obligations within the UAE. However, we do have these documents and are very happy to present them but don’t feel that we should be penalised by being unable to reach them within the 20 days. The panel will see from publicly available records on the government website that the Respondent did change its name to My Switch in December 2009 in accordance with the compromise made with the Complainant. Although this is not as strong evidence as the documents themselves, it clearly indicates that we would have no reason to do this if it wasn’t for the Complainant ’s legal team threats of trademark infringement and the compromise we made.
The Complainant was fully aware in 2009 that we vigorously disagreed that trademark law enabled them to stop us using a generic word such as YOU or Switch in a company name or domain name.
Our use is completely legitimate as the Complainant already know from 2009. The domain name has been in constant use for 15 years by the legitimate company My Switch LTD which was formally You Switch Limited. As we originally made clear to the claimant in 2009, the word switch is a generic product and to include a generic word in a trade mark and then aggressively disrupt all other businesses with a similar sounding words offends the spirit of the law.
USWITCH wish to aggressively enforce its trade mark for the word switch and all similar sounding words, however the meaning of the word switch as they use it is as a service is for a price comparison website.
The most popular use of the word switch is as a product e.g a light switch, a computer network switch, or as in our case our Unified Switch the Yolanda Origin Unified Switch.
It makes perfect legitimate sense for our company to both be called YOUswitch and use the domain name YOUswitch for our: Yolanda Origin UnfiedSwitch. The problem comes as the word SWITCH is a generic word. The problem with the trademark is further magnified as they use the letter U to form the word USWITCH. This means that they also want to protect another generic word YOU, the letter U, EWE (which is an adult female sheep). The Complainant would have absolutely no idea how a Yolanda Unified Switch works. To further compound this USWITCH register the trademark under lots of classes of business that they have not, do not, and we very much doubt will ever have an interest in other than to compare just about any industry or product under the sun on their price comparison website. The true nature of business of USWITCH is limited to and always has been for 22 years as a price comparison website. They do not make switches, raise or sell female sheep, nor make and support network switches, light switches or any other kind of switch. The Complainant registered a huge range of classes but they don’t offer anything other than a price comparison website.
The Respondent only provides goods/services to corporations and not to the general public at all. The same is true of UK Wholesale Direct LTD. As the Complainant points out, the disputed domain name reinforces this as it ends in .BIZ which would indicate business, this is very different to the consumer energy market audience of the Complainant.
Overzealous targeting of any similar sounding words in industries which are not related to the activity of USWITCH is predatory, unfair and bad faith in our opinion. USWITCH would like to cast an unacceptably wide net using their trade mark across just about every market they can think of and prey on smaller companies over legitimate domain names that do not infringe and clearly cause no genuine confusion to the public. The most likely motivation is that the Complainant employs an external company to hunt out any infringement, which has a need to justify their ongoing fees.
Many companies use the common descriptive word such as: Switch.co.uk; tyouswitch.com; HUESWITCH; activateyourswitch.com; ayou-switch.com; helpyouswitch.com. Switch.com is a lighting company, with absolutely nothing to do with a price comparison website. The Complainant could claim that their registration includes class 11 ”apparatus for lighting”. Just as it is in our case this would be an abusive over reaching. See also https://switchd.co.uk/ This company does have a very similar name and is a price comparison website, but instead USWITCH has decided to attack us.
In the complaint they point out that there was a page forward to a company that we supply services to called UK Wholesale Direct LTD, they pretend that UK Wholesale direct is a broker for telecoms services and therefore in their class of business. Again, this is not true, UK Wholesale Direct is a business communications provider, not a consumer price comparison website. USWITCH are not a telecommunications provider, they are a price comparison website. If USWITCH was or was intending to be a telecommunications provider they would need to apply for a license from the UK’s Office of Communication, there is no request for a licenses logged nor has there ever been.
Our web logs demonstrate there is no traffic and no confusion at all with the USWITCH website. The domain name YOUswitch.biz receives absolutely no traffic at all (not surprising the domain isn’t used for a website). Zero visitors, zero web searches, zero paid adwords, how on earth can the argument be made under trademark law that the domain is causing confusion to the public! This can be confirmed independently using a tool such as SEMRUSH.
The Respondent has continued to operate the disputed domain name, in good faith since making the compromise of changing the company name but retaining the domain name in 2009. Taking the domain name away from it would cause significant harm and cause huge disruption to its emails and the YOU Switches which use the DNS routing of this domain name.
Not surprisingly there are also many examples of domain names using the generic and descriptive word also, even one which is actually in the same class of business as the Complainant, interestingly they have not been able to successfully enforce their mark despite them being a price comparison website. Please see www.switchd.co.uk.
The genuine competitors of the Complainant are:
comparethemarket.com
switched.co.uk
moneysupermarket.com
The Complainant provides their service to homes of residential energy consumers. The Respondent and UK Wholesale Direct provide products exclusively to commercial organisations and not residential consumers.
The disputed domain name was registered and is used in good faith. This complaint is made with extreme prejudice given that it is 13 years after the Complainant challenged both the domain name and company name and a compromise was agreed that included that the domain name would remain with the Respondent as it caused no harm or confusion and would be harmful and disruptive to its DNS routing of its YOU switches and e-mail use.
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