Are plural domains a copyright infringement of the singular?

Hi folks, I am a newbie so please excuse any ignorance in this field, but I need to clarify a couple of things in regards to domain names and trademarks, firstly is it true that all plural versions of a domain name are automatically a trade mark infringement of the singular, if they are registered afterwards, I read something about if you are a US citizen that as soon as you register a name you are automatically protected by the common law trademark and that any other registrations are infringements. So are loans.com or creditcards.com automatically an infringement, if the singular was registered first by somebody else? If so does this also apply the other way if somebody registers the plural first?

Also how does this apply to different extensions of either the plural, singular, or even the exact same word, assuming it’s a generic term and not obviously an infringement in any extension like “microsoft windows” would be, is creditcard.net an infringement of creditcard.com if it too was registered by somebody else afterwards? Also is all this internationally legally enforceable? I live in the UK, would somebody been protected by a US common law trademark be a problem for me?

Many thanks in advance

John

 

I wouldn't think it was automatically infringing if the singular is something generic like loan or creditcard.

I'd imagine it depends a lot on what you do with it as well.

 

No I wouldn’t have thought so if it was a generic term, but I have been reading various horror stories of people been threatened with legal action by the people who own either the singular or plural version of their name even if it is a generic term, who registered it before they did, that’s when I came across the US common law trade mark thing, which I found even more concerning as I have plural names for which the singular had already gone. In terms of how you use it from how I understand it you can be ok if it’s been used in a totally different market to the one that is claiming the trade mark, but in the case of most domain names unless it’s the type that could be used for practically anything, it wouldn’t be much use if it can’t be used in that field, creditcard.com is only going to be any use for that particular market, if it is prevented by doing so by law it makes it pretty useless.

So anyway I thought I would ask some more experienced domainers what the score is on this?

 

Yeah, but it doesn't get much more generic than "credit card". The term is 120 years old and there are several companies who supply them and call them credit cards. I doubt anyone could hassle you for using a variation of the words credit and card in a domain name.

I think that pretty much with generics you're fine.

 

Yeah I thought pretty much the same, although the term “credit card” is an example of something that is extremely generic and probably would be very hard to trade mark, perhaps it is a bad example, a better example for a domain name that may face this kind of problem may be something like cheapestcreditcard.com, do you think a name like that could face this kind of problem? Also the other question I have is even if the words before the extension are too generic to TM, could someone who regged either the plural or the singular of your domain name before you did have a claim to a trade mark that included not just the generic term, but the generic term combined with the extension like “creditcard.com” for example, including the .com bit as part of the trade mark, then get you for using creditcards.com if it was registered after them. How possible is that do you think?

Thanks for your input it is really appreciated.

 

Again, cheapestcreditcard.com is just generic.

And I doubt anyone would be granted a trademark that specifies the .com part.

 

Okay, you're right about that. If a website such as Facebooks.com were to open and go into the social networking business as Facebook.com has been then the infringement is inherent by the fact that Facebooks.com is acting deceptively. Two very similar businesses cannot enter the market with extremely similar names where confusion rests in the distinguishing of authentic from fallacious.

The same can be noted offline. A business in Aspen, Colorado USA incorporated a business and called it Sky Drinking Water. This business engages in the sale of bottled water. The business becomes a success. Later, another business incorporates in the same city called Sky Drinking Waters. That second business CANNOT engage in the business of selling bottled water. If Sky Drinking Waters does engage in the same business, because the names are way too similar, Sky Drinking Water can issue a Cease and Desist against Sky Drinking Waters, and also a lawsuit for monetary damages that may have resulted from their infringement against the Sky Drinking Water brand.

Sky Drinking Waters would not have lost if it hadn't been engaging in the same business as Sky Drinking Water. The two businesses may be legally incorporated with similar names. However, when business names are so similar and their businesses engage in the same market and confusion is prevalent, it becomes necessary to distinguish between the entities. Therefore, two entities cannot exist in the same market whilst engaging in the same business without infringing on the others rights to exchange goods and services through fair commerce.

It would be illogical and unethical to allow another business to deceive the consumer in believing they are whom they are not. This is irresponsible behavior and isn't tolerated in the civil court system. The monetary losses can be infinite!

Yet, if the domain owner has created Facebooks.com to engage in the business of a travel agency or another business not related to Facebook.com then infringement cannot exist unless Facebook.com could prove that Facebooks.com is an infringement upon its trademark which is detrimental to its business (Which wouldn't be too hard to accomplish).

Do what you think is right. If later an infringement issue does come up, deal with it! Yet, for now, if you yourself believe you would be acting deceptively if you went ahead with this development then it is obviously a BAD IDEA. Its better to find your own traffic than to catch traffic from another site, which does by how you're describing it, seem deceptive in nature.

 

Hi puremonopoly thanks for your advice, no I am not talking about registering names that are the plural of established websites in order to cash in on their success, the names I have are plurals of names that at the moment don’t even have a website on them at all and are just parked, I bought them just because I like the names and not to hitch a free ride of the back of somebody else’s work. What worries me however is the idea of me developing the site and spending time and money on it and then somebody else who may or may not have developed a website on their name, saying we registered either the plural or the singular first and therefore we own the trade mark for any domain name which is either the singular or the plural that ends with that extension.

I must admit I have read some extremely conflicting stuff on this issue, some people have said that whoever registers it first in either the plural or singular even if they are just sitting on the domain automatically owns some kind of trademark which your singular or plural of the same extension would be an infringement of and have even referred to things like the common trade mark law, other people have said it’s completely false and complete rubbish. I am new to domaining and I must admit I find the difference in opinion very confusing and I think if I am going to pursue domaining and developing it is pretty important to know how the land lies, which at the moment unfortunately I don’t feel I do.

 

Well, the correct answer that you'd be looking for is... Because the other domain is parked and has no 'established business presence' there is no infringement upon them by you. They registered a name, nothing more. That is like setting up an incorporation with the Secretary of State (in the USA) and filing Articles of Incorporation that read, "The purpose of the corporation is to engage in any lawful act or activity for which a corporation may be organized..."

Every domain is a corporation. There is no need to file Articles of Incorporation for a domain. However, the domain holder, depending on the business they engage in, may need to acquire a specific license to do business in their area. Yet, most websites are exempt from this requirement because their business doesn't fall into these specific categories (i.e. A website engaging in the dismantling of vehicles must acquire a Vehicle Dismantling License in their area to engage in this specialized offline behavior because they cannot dismantle a vehicle over the internet ).

When dealing with domain names, established business presence MUST EXIST in order for a domain name to hold validity to a trademark if it does exist. A domain cannot be parked without even setting up the page to let the visitors know they are engaging in a specific business. Merely stating that a business is in a specific market isn't enough. The business must actively engage in the specific business and in order to infringe on their rights as a business, the other domain with a very similar name cannot engage in the same business as the former.

Don't be persuaded by speculative infringement clauses people assume exist. The only way another domain holder can seek damages from you for registering a domain is if your domain is acting and engaging in the same business or very similar as yours.

Here is some information I just found online which is correct in its assertions on issues involving domain ownership:

"As long as I do not sell clothing or apparel, link to anyone who sells clothing and apparel, or try to confuse people into believing my website is owned by you, I have not violated your trademark rights."

However, I do not agree with their ideas on TLD's. .com will always be the strongest of any extension and all others are weaker.

Don't engage in their business and you will be fine. And if their business is engaging in nothing... make sure you do something!

 

I'd recommend you to park the plural forms. There is no infringement here. You will benefit from the cross traffic.

 

Thanks guys I really do appreciate your advice, I have looked into it more and it seems descriptive terms are very hard to trade mark and generic terms you can’t TM at all, any trade mark even under common law has to be earned and in the case of a descriptive term would require significant public recognition, even if you put a website on it and engage in some kind of business related to that field you have to be relatively significant to qualify.

This is my understanding of it thus far, if anybody else thinks differently feel free to correct me.