stripping an "s" from another domain

partymarty4870 · Oct 20, 2011

My business partner is in a bit of a panic about something I've done.

Whats the thought on dropping an s from a domain.

Without revealing too much (although any well respected members who are very knowledgeable in this field - please PM me and you can have all the details) what I've done is this

my competitor has mytownboatrentals.com.au and mytownboatrentals.com

I've just registered mytownboatrental.com.au and mytownboatrental.com

Now where it gets tricky is that their registered business name is mytown boat rental services

their site is quite old and has occupied the number one spot for ever. My main site (totally different to above) already ranks 2nd, 3rd and 6th for their main term with some interior pages, but I want to really corner this one, as it's a great niche.

Am I safer using the .com or could I get away with the .com.au?

And Am I inviting lawyers to get involved - because she'll be pretty pissed off with me. Her site pays 2 full time wages.

fieldinspector · Oct 20, 2011

Unfortunately, if the owner of the other site were to launch a dispute it is very likely that their case would be successful. The fact that their registered trademark has no "s" is not particularly helpful to your case as the policies of both ICANN and auDA cover "deceptively similar" names including situations where letters have been omitted. To quote directly from the auDA policy:

4. SCOPE OF PROHIBITION

4.1 The prohibition on misspellings applies where:

a) the domain name is a misspelling of an entity, personal or brand name that does not belong to the registrant; and

b) the registrant has deliberately registered the misspelling in order to trade on the reputation of the other entity, person or brand.

4.2 For the purposes of the prohibition, a domain name will be regarded as a misspelling if it falls into one of the following categories:

a) the singular version of a plural name, or the plural version of a singular name (eg. woolworth.com.au, safeways.com.au);

b) a name with missing letters (eg. yhoo.com.au);

c) a name with additional letters (eg. quantas.com.au);

d) a name with transposed letters (eg. goolge.com.au, wetspac.com.au);

e) a name with letters replaced by numbers, or numbers replaced by letters (eg. 9msn.com.au);

f) a hyphenated version of a name (eg. e-bay.com.au, micro-soft.com.au);

g) a name prefixed by "www" (eg. wwwseek.com.au); or

h) any other name that auDA determines is a deliberate misspelling, having regard to the surrounding circumstances.

Expertpeon · Oct 20, 2011

I'm not completely familiar with Australian laws in regards to this but here's how it works in the USA.

Boat Rental Services Inc
Boat Rental Services LLC are two completely separate entities... and both can be registered by different businesses and used however they like.

The only issue, is when company name infringes on trademarks... but this is shady.
This is only an issue if it is clear that someone is using the name in order to profit off of the wider trademarked brand's notoriety, but this is a fuzzy argument.
If the terms are sufficiently similar, and similar to many other business names/trademarks that exist, courts will not recognize its claim even with a trademark filed.
For instance there's a Mcdonald's corporation since 1978
http://kepler.sos.ca.gov/cbs.aspx
Even a Mcdonald's Hamburger
"MCDONALD'S HAMBURGERS OF LANCASTER"

fieldinspector said:
Unfortunately, if the owner of the other site were to launch a dispute it is very likely that their case would be successful. The fact that their registered trademark has no "s" is not particularly helpful to your case as the policies of both ICANN and auDA cover "deceptively similar" names including situations where letters have been omitted. To quote directly from the auDA policy:

ICANN is a whole different ballgame, though it's unclear if it's a registered trademark or simply a registered business name (of course in the latter case it's of absolutely no infringement claim).
ICANN is really a lobbyist's law, and needs to be abolished as swiftly as possible, though I do not think a trademark of "Boat Service Rental" is ever going to pass the "uniqueness" muster... a basic requirement of all trademark filings.

fieldinspector · Oct 20, 2011

Trademark law issues aside, under the UDRP it's exactly the same as in Australia:

1.10 Is a domain name which contains a common or obvious misspelling of a trademark (i.e., typosquatting) confusingly similar to a complainant's trademark?

See also the relevant section in the WIPO Legal Index.

Consensus view: A domain name which contains a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name.

In this case a trademark has been registered, but even if it was not there could still be a case if the owner can show a common law trademark:

1.7 What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights?

See also the relevant section in the WIPO Legal Index.

Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such "secondary meaning" includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required. Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness. Some panels have noted that the more obvious the viability of a complainant's claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted.

I think the UDRP is the only way to manage cross-border disputes and is extremely cost-effective compared to legal action through the court system.

Expertpeon · Oct 20, 2011

fieldinspector said:
I think the UDRP is the only way to manage cross-border disputes and is extremely cost-effective compared to legal action through the court system.

Hint: Cross-border trademark disputes should not, under any circumstances, be given any consideration...
National sovereignty gives each country rights to manage and govern business names, trademark enforcements (or lackthereof) and any consideration for whether or not they will allow copyrights.

Anything further than this, or any attempt to impose some kind of "universal" rule like the UDRP/ICANN shit is honestly, just another example of America trying to control the world but forgetting it needs to control its own people (and corporations) first. If most people even knew what these things were, I doubt they'd be too distraught to see them go.

However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required. Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness.

Thanks for reiterating my point, even if you completely misinterpreted it (just don't write your next brief about this).

New York Boat Rental is not distinctive, but rather descriptive.

fieldinspector · Oct 20, 2011

Expertpeon said:
Thanks for reiterating my point, even if you completely misinterpreted it (just don't write your next brief about this).

New York Boat Rental is not distinctive, but rather descriptive.

I didn't say that it was distinctive. Descriptive terms can be protected but there is a "greater onus" to show that they have built up such a reputation so as to be given protection.

Expertpeon said:
Hint: Cross-border trademark disputes should not, under any circumstances, be given any consideration...
National sovereignty gives each country rights to manage and govern business names, trademark enforcements (or lackthereof) and any consideration for whether or not they will allow copyrights.

That's correct, but when it comes to intellectual property most countries have signed international treaties and are bound by the obligations contained within those treaties.

Anything further than this, or any attempt to impose some kind of "universal" rule like the UDRP/ICANN shit is honestly, just another example of America trying to control the world but forgetting it needs to control its own people (and corporations) first. If most people even knew what these things were, I doubt they'd be too distraught to see them go.

The US actually doesn't play a big part in it all. If it wants favourable trade terms with other countries, it must be a signatory to the major IP conventions and treaties. Has nothing to do with the US wanting to control the world.

Expertpeon · Oct 20, 2011

fieldinspector said:
I didn't say that it was distinctive. Descriptive terms can be protected but there is a "greater onus" to show that they have built up such a reputation so as to be given protection.

I'm sure you will agree that this is so tenuous in the case of "cityboatrental" that one can almost laugh about it

That's correct, but when it comes to intellectual property most countries have signed international treaties and are bound by the obligations contained within those treaties.

Eh, there's a lot of political pressure, and not a lot of reciprocation. I also wouldn't consider like 30 1st world countries to be much to go on.
Even HK refuses to enforce and regulate copyright/trademark violations. And their 2% unemployment speaks volumes about their government's management skills.
It seems highly likely that copyright and intellectual property will disappear within a generation, much to the satisfaction of historical and brilliant philosophers on the subject (Thomas Jefferson was a smart man).

The US actually doesn't play a big part in it all. If it wants favourable trade terms with other countries, it must be a signatory to the major IP conventions and treaties. Has nothing to do with the US wanting to control the world.

lol this makes no sense, but whatever.
ICANN and the UDRP was invented, organized and promoted by the USA in the 90s.
http://en.wikipedia.org/wiki/ICANN
ICANN itself is an american company, and it FABRICATED the UDRP rules
k thanks.
Many internet people actually bought up domains of famous brands (mcdonalds etc) early on (because these companies are run by mongoloids who have no grasp on future opportunities and instead lobby to remove competitors.) The UDRP is undoubtedly a byproduct of lobbyist efforts to give legal footing and take back these domains without actually having to do anything, like think ahead.

partymarty4870 · Oct 20, 2011

cool, thanks guys.

you've given me a better understanding of it.

You wouldn't beleive it, but I actually own the best domain in the niche. I've had it for about a year and a half and "misplaced" it.

It's only when I did a whois that I found out Iis.

I've forwarded the domain in question to the newfound better domain. I'm not too worried of any repurcussions as I think the distinctive clause would get me out of any dramas when taken in consideration of the actual wording. I'm kinda used to ignoring cease and desists anyway.

stripping an "s" from another domain

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