Is this a Trademark Infringement?

[JamesCrew]

Hi,

So here's a scenario. I thought of a brandable domain name but it was already registered with an active business website. Let's say for example that the domain is: s k y y e r (.com). Also let's assume that this domain owner has registered it as a trademark.

Now I am O.K. to have this domain with "S" in the end; s k y y e r s (.com).

Question: Can it be considered as a trademark infringement?

Although the registered trademark does not have the "S" in the end?

Secondly, the domain I will purchase will not have the same business intent as the original domain is based on. For example, if the original domain has a website about Air Planes, then I will be using/marketing the domain for a Software related product or anything else.

Please share your thoughts whether it is safe to go for this domain with "S".

 

[Hypersot]

The whole issue is how you plan to use a TM name. If you use it in a niche where that name has the authority then you'll be in trouble, no matter if you include an 's' or not. If you don't use it in the same niche then I don't think you'll have any issue.

For example, there is Apple which have a trademark in a lot of electronic niches and then there is Apple which is an underwear brand.

On the other hand, I'm not sure what would happen if someone used Samsungs for a travel company (as an example)

Imo, you should always ask a lawyer for legal matters. Would you feel secure with any answers you got in this forum?

 

[Brandworthy]

You're unlikely to get much more than a "it depends" response here.

It's worth noting that trademarks do not entitle their owners to blanket exclusivity, and so long as you are not creating confusion with customers it is possible to use a trademarked term for your own business. Operating in an entirely different industry or geographic location might be cases where you could use someone else's TM without infringing their rights.

However, if your plural name is in same industry/geographic area then it's very unlikely you'd get away with it. Also note that the above relates to TMs generally, and the case of domains is handled by UDRP. The outcome of UDRP is akin to a crap shoot at times, so YMMV as to whether a panel agrees with any argument you make.

 

[Name Trader]

@Hypersot - I would imagine if an UDRP was brought by samsung for the domain, they would not prevail. Provided the owner had a legitimate use for using the samsungs domain. Like the owner was Sam Sung. As far as I know, samsung are not in the travel agency business. Nissan still doesn't own Nissan.com.

@JamesCrew - You'll be fine using the plural in a different business.