Back in July 2001, I built a product called Winzos - an app on iOS and Android where users in the US could play casual games and trivia to earn tickets towards running contests and win cash, gift cards and more. In addition, desktop users could install our browser extension and earn tickets towards contests from their online purchases at Amazon.
One day, I learned that all our apps were no longer working and e-mails were no longer being received. I soon discovered that the registrar I registered the domain name with (Namecheap) had suspended the domain. This meant that all API calls were breaking, e-mail based 2FA didn’t work, and customer emails were bouncing. The business effectively came to a screeching halt.
I then discovered that a well-funded Indian company that operated an experience called “WinZO” primarily geared towards the Indian audience sued me for trademark infringement in an Indian court and the court had ordered the domain name registrar I used (Namecheap) to transfer the domain to the Indian company.
Namecheap was compelled to suspend the domain on the basis that non-compliance would mean their service would potentially be blocked from Indian customers registering domains with their service. And my app hung in the balance.
To be sure, I looked back at “first use” of the mark in the US and found that the Indian company only recently was aiming to enter the US market (evidenced by archived screenshots in Wayback Machine and supporting actions as shown below). However, their claims asserted that they were using the mark all along and that I was infringing on their trademark. And they conveniently filed in India.
Firstly, I never cared (or considered) to operate the app in India. Our users were all US-based, the rewards were all USD or USD-equivalent, and the revenue model only worked with US advertisers and partners.
Secondly, our business model was completely different than the Indian company’s. We did not require users to pay in with cash (our product was ad/affiliate supported) while they were primarily a cash consideration based experience. And most importantly, we had been live in the app stores since July 2021. Read on to see how they started to “stand up” their US entity well after our app(s) went live.
Through strong-arm tactics employed via their Indian counsel and via the Indian court system, they were able to get the order granted in a way that impacted my US-based business and the US-based domain name registrar was forced to take action.
In June of 2023, I attempted to contact the CEO of the Indian company soon after I discovered that the domain was suspended and did not receive a reply. Only over 11 months later did he attempt to contact me via LinkedIn claiming he had just seen the message and to talk to him via WhatsApp.
Based on the shenanigans pulled over the year by their counsel, I was hesitant to speak with him as my hunch was that the conversation would be used against me in some way. I told him to drop the frivolous lawsuit in India (and he ignored my message).
The terms of service on their website references Winzo US Inc (the Indian company’s US entity) which was only formed on 10/7/2022 (over a year after the 1st release of our app)
Winzogames.us (the US website for Winzo) was registered on 6/6/2023 (to show their entrance into the US market).
The application for the Winzo trademark was filed on 5/31/2022 (10 months after the first release of our app)
I’m fortunate enough that both Apple and Google did not bend to the Indian company’s likely demands to shut us down considering their history of suing in general. From the outset, we ensured that our app was not available anywhere in India via the app stores - again because the model just wouldn’t be viable for that market.
Ultimately, because the domain was shut down, I scrambled to register another domain name (winzos.io), set up API endpoints to point to the new domain, re-submitted apps (and luckily was able to swap emails for major services without much fanfare). However, the Indian company is now on the attack again trying to take the new domain too. (The irony is that they don’t even have winzo.com - which should have been where they invested their dollars over the lawyers).
It’s now September 2024 and here is the new complaint filed with the Indian court system. The continued claim is that they have been operating for much longer than we have (which I have no problems claiming the accuracy of - just that this is true in India and India alone). Their complaint is chockful of pages of IAP receipts (all from Indian customers) to inflate the complaint document to over 700 pages. To be fair, I have no problem with not being in the same jurisdictions they have rights to but bullying us in the US is clearly out of line.
Here’s why this is a big deal: In today’s economy centered around digital products, markets stretch beyond borders. Namecheap has customers across the globe - including India. The precedence set here is that no business with any domain name is safe because another business domiciled in another country can threaten ownership based on a fairly simple premise and with jurisdictional bias. In this case, an Indian company focused on an Indian market sued us in an Indian court when our product, customers and market are in the US.
This means that if somebody started a company called “Stripes” in India and focused on the Indian market and did the same, they could theoretically sue Stripe in the US (or elsewhere) in India and the Indian courts grant the domain to “Stripes”. Or, at the least, shut the domain down while litigation happens.
I will continue the fight.