#SCOTUS rules that the addition of “.com” to a generic term can create a protectable trademark
— SCOTUSblog (@SCOTUSblog) June 30, 2020
Booking.com has won its trademark case at the United States Supreme Court. The 8-1 decision was written by Justice Ruth Bader Ginsberg. Justice Stephen Breyer was the lone dissenting Justice. You can read the PDF decision on the Supreme Court website.
The company will now have trademark protection for its full Booking.com brand, including the .com domain name extension. The Internet Commerce Association (ICA) filed an Amicus brief as part of this case.
Debevoise & Plimpton partner David Bernstein, who filed the SCOTUS Booking.com briefing as co-counsel, offered comments on today’s Supreme Court decision:
“The Supreme Court has confirmed what millions of consumers have known for years – Booking.com is a brand name, not simply a web address. In a 8-1 decision written by Justice Ginsburg, the Court confirmed that the consumer is king when it comes to brand names, and if consumers perceive a term to be a brand name and not merely a generic or descriptive reference, then that name is entitled to trademark protection. This decision is a victory for countless brand owners that have invested significant resources in building their brands – such as Weather.com, Law.com, Wine.com and Hotels.com, as well as others like Home Depot, Salesforce, TV Guide, Pizza Hut, and The Container Store – whose trademarks, the Court acknowledged, would have been at risk if the government’s position was accepted.”
And ICANNs entire model of dropping domains so they aren’t ‘forever off the market’ is defeated. Simply create a brand and you own the .com FOREVER. Regardless if you keep it or not.
Also, in a perfect world, this wouldn’t be so bad — the ‘distinguished, well known brand’ stipulation. One problem with that! There are already 1000’s of TMs for the full string (with .com) attached! This is nothing new. For knowing or not, it’s been happening all along. This case just brought light to it.
Right. There are 1000’s of .coms out there with EXACT trademark (“.com” included) protections.
So then, if you’re lucky enough to buy one of these (assumable failed) brand EMD .coms…well, ultimately you have no right to it!
Like I said. 1000’s already exist. Might want to check your premiums for the dreaded “.com” mark on the USPTO database now. You generic domain might have baggage.
How long before some outstanding entrepreneur figures out that they might go search for the .com trademarks?
All they have to do is get in touch with TM owner and explain how valuable their OLD .COM domain is TODAY. Reclaim their ‘rightful’ property then sell it ‘legitimately’- this time, with the associated trademark too.
Sounds very profitable. You could easily be accepted as a hero among the sheeple for your proactive social justice. You domain ‘squatters’ are the evil ones. Remember that.
Good point. That is why it would be imperative to sell the dotCOM trademark along with the domain name. We have a Service Mark for our GolfClub.com and it is promoted as part of the sale.
I addressed this issue at thedomains blog back in 2014 at the following link:
https://www.thedomains.com/2014/05/01/google-testing-a-version-of-chrome-that-hides-the-url/#comment-138258
(Hopefully, Elliot will allow a link).
The Internet used to be very “long tail” and fragmented. Apple started to change that with the iphone and the App Store. The Internet became a place of ecosystems and big brands in recent years. Today’s decision is just the confirmation of that development. The very high end of generic top domains will likely benefit as big corporations want to create their own platforms and they’re willing to pay a hefty price for a high end domain that does the trick.
And sure, there is no way ICANN can stick to the 10 year registration period. Billion dollar companies don’t just want to be a registrant of their EMD’s. They want to OWN them. As in forever. Change is coming.
Next will be Booking.com wanting to OWN it’s Booking.com domain name, instead Verisign.
Be careful what you wish for domain investors!
Eventually the average person will not be able to own a domain name unless they jump though hoops wrapped in red tape.
Government regulation is coming to the domain Industry.
Huge. My brother texted me with the news, but I was skeptical until I read the SC decision. Pop the champagne.
Unless I’m missing or misreading something, it seems to me that you have to prove acquired distinctiveness in the mind of the public, and cannot just get a trademark for any .com you want without that per this decision. That’s a tall order, so I’m not sure it’s really all that “huge.”
For me the real question is where that leaves people with Example1Example2.com where some other party managed to get a trademark for Example2.com and the first party wants to do business as Example1Example2.com. Or “Example0Example1Example2.com.” Perhaps the answer is as obvious as it seems, but if it is then that seems extremely unjust and wrong to me.
And if that is accurate…
…It would seem the USPTO can still just reject applications as they see fit and put the onus on the applicant to adjudicate their case.
Booking.com itself acknowledged that close variations are unlikely to infringe” and that a trademark registration “would not prevent competitors from using the word ‘booking’ to describe their own services”. Ebooking virtually anything else that is close to booking is still safe. Why would it not be.
Some people think they will go out and register the .com of a company and then go after the owner in reverse, this has already been attempted one guy who tried to register 200 trademarks with already established companies, will never work. One reason to get a .com trademarked is to stop stupid udrp
s from other people going after your name. If one won a udrp for a .com how would one force the trademark owner of the .com to hand over the trademark? They can’t and even if they won the name they could not use it as it would be trademarked.
“Booking.com itself acknowledged that close variations are unlikely to infringe”…”
Yeah, and some 10 year old kid promised that if Mom and Dad bought him a BB gun, he’d never shoot it at somebody. Those words are meaningless.
If you are trying to figure out “Does this help or hurt domainers?” then you should first understand that you are not getting trademark protection for your dictionary-word domain name that isn’t advertised and promoted out the wazoo.
Then, take a look at relevant historical UDRP decisions and ask yourself “Who would this decision have helped?”
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https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2013-2118
Dynamis Limited v. Alice Stephen Uppal
WIPO Case No. D2013-2118
“The Complainant contends that the disputed domain name is virtually identical to its common law trademark BUSINESSESFORSALE.COM. The Complainant submits that the deletion of the letters “es” at the end of “businesses” does not distinguish the disputed domain name from the Complainant’s common law trademark.
…
The Respondent contends that the term BUSINESSESFORSALE.COM is descriptive if not generic and that it is not distinctive of the Complainant. The Complainant has not provided evidence suggesting that the Complainant’s long-standing use of BUSINESSESFORSALE.COM has resulted in the relevant public recognizing the phrase as exclusively denoting the Complainant’s services.”
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https://www.wipo.int/amc/en/domains/decisions/html/2002/d2002-1167.html
Snowboards-for-sale.com, Inc. v. Name Administration Inc.
WIPO Case No. D2002-1167
“Complainant alleges that it has common law trademark rights in the marks SNOWBOARDSFORSALE.COM, SNOWBOARDS-FOR-SALE.COM, SNOWBOARDS4SALE.COM and SNOWBOARDS-4-SALE.COM. . Complainant’s web business using the mark allegedly is consistently ranked as the top result on search engines when querying for snowboard equipment for sale and receives approximately 3 million page views per year.
…
Respondent asserts that the term “snowboards for sale” is not a trade or service mark of Complainant but a generic term.”
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Booking.com itself acknowledged that close variations are unlikely to infringe”
Curious if one registered a similar name would that help fight off a UDRP from them? But anything registered after this is DOA ???
Correct a similar name registered before them getting the TM
The decision will eventually render many generic domains worthless.
For example, right now beer.com and beers.com are for sale.
Let’s say someone buys beer.com, develops it for beer, and obtains a trademark for beer.com.
If you are the registrant of beers.com, who is going to buy it? Do you think any lawyer is going to tell a buyer it would be safe to spend money on that?
No way.
Domainers are being profoundly misled and misinformed about the consequences of this decision.
Makes sense at first John, but did the TM for art.com render other names in that sector worthless already? Also How would you advise a company like booking.com to protect themselves from abuse of their name or to protect the brand that they are trying to create ?
Interestingly, as Adam pointed out, even before the Booking.com decision, this was a potential issue, since for example, ART.COM received a registration for online retail store services featuring art, 11 years ago in 2009.
Indeed, SCOTUS noted that “the PTO’s own past practice appears to reflect no such comprehensive [per se] rule” against such registrations, and SCOTUS “discern[ed] no support for the PTO’s current view in trademark law or policy”. Accordingly, I think that the status quo was essentially confirmed, rather than any new approach created by the decision.
Non-use of a domain name while another party obtains a trademark for a similar term is a longstanding and continuing hazard for domain name registrants. Of course, the hazard is lessened when it comes to a generic.com because the threshold is so considerable for demonstrating that consumers identify the mark with a particular company. I don’t think this decision lessened that threshold at all. The difficult part as usual, is how the USPTO will handle claims of such consumer identification when it comes to generic.com’s. I suspect that the USPTO will take a hard line and it will take courts to provide more guidance than what the SCOTUS provided in this case.
Here’s a subtle thing that might have been missed: If Example.com is a TM, then the “.com” is an integral part of the mark itself, and can’t be removed willy-nilly, when it’s convenient for your argument. Thus, the plural of Example.com is actually Example.coms (“s” after the dot-com). To see this, consider if the mark was simply “.com” itself. What’s the plural of “.com”? It’s “.coms” (i.e. dot-com —> dot-coms).
In comparison, Examples.com is an entirely different and distinct animal. If “Example” by itself was the trademark, then “Examples” would be the plural of that mark. But, the holder of a TM for Example.com alone in its entirety doesn’t have rights to variations of “Example” standing alone (i.e. as I said before, they can’t just drop the .com from their argument when it’s convenient, and then circle back and add it later on).
The decision itself noted:
“Notably, a competitor’s use does not infringe a mark unless it is likely to confuse consumers. See §§1114(1), 1125(a)(1)(A); 4 McCarthy §23:1.50 (collecting state law). In assessing the likelihood of confusion, courts consider the mark’s distinctiveness: “The weaker a mark, the fewer are the junior uses that will trigger a likelihood of consumer confusion.” 2 id., §11:76. When a mark incorporates generic or highly descriptive components, consumers are less likely to think that other uses of the common element emanate from the mark’s owner. Ibid. Similarly, “n a ‘crowded’ field of lookalike marks” (e.g., hotel names including the word “grand”), consumers “may have learned to carefully pick out” one mark from another. Id., §11:85. And even where some consumer confusion exists, the doctrine known as classic fair use, see id., §11:45, protects from liability anyone who uses a descriptive term, “fairly and in good faith” and “otherwise than as a mark,” merely to describe her own goods.”
So, I think consumers will learn to “carefully pick out” and distinguish Example.com from Examples.com.
Of course, some overreaching trademark bullies will try to say otherwise, but I think there’s a strong argument for coexistence.
I am getting dizzy with some of the arguments herein. Is it not clear, that in order for the trademark registration to take place, the standard is whether the domain name is identifiable with a particular company in the eyes of the consumer? If someone registers beer.com, would it not be unlikely that they gain the recognition to be identified as goods coming from their source rather than a generic good? Could they have to gain the market share to the standard of booking.com to get those protections or i am reading this differently? Perhaps in rue of your framing of this, owners of potentially trademarkeble domains in this context should up the value of those domains knowing how extremely valuable they can be to potential inquirers so its a win for both sides of the table? I see no problem of goods going to the highest valueing owners.
Agree with J Berryhill. The decision has widespread consequences. Also, what about a generic or descriptive domain with a trademark that is dropped and sold at auctions. Would the trademark holder be able to reclaim it? Would the new owner be able to trademark it for the same description/category in presence of a live mark?
As mentioned above, I think it is crucial to consider the that the Booking.com decision really didn’t change the law when it comes to trademarking a generic.com, rather it essentially maintained the status quo.
What the Booking.com case was really about, was the PTO’s attempt to create a *new* policy banning all generic.com from trademark registration, period. SCOTUS found that this proposed new approach was wrong and the law should be how it has been to-date. As mentioned, even before the Booking.com decision, ART.COM, for example, received a registration for online retail store services featuring art, 11 years ago in 2009.
I think there is way too much to celebrate here to worry about some of these “What ifs” that may or may not materialize.
Biggest day in domaining history!!
JB. There are risks and some generic domains may be adversely affected but others, many more, will be much more valuable (ie Sweepstakes.com where the plural is not relevant). I agree as i often do with Rick Schwartz that the overall is a massive win. The #1 being the statement by a SCOTUS judge in his dissent which unequivocal and with no bias stated why a generic domain creates such a competitive advantage, because these bullet points are usually stated by domain advocates. By being in the press and on the Internet forever from the SCOTUS stated so powerfully is the really a game changer.
I think Zak M. is making the most sense here.