Earlier this week, the United States Supreme Court ruled that Booking.com can be trademarked. The 8-1 decision was a good read, and there was some interesting insight from the opinion. The dissent, written by Justice Stephen Breyer, included some positive language that will likely be referenced by generic .com domain name registrants:
Breyer: “The owner of a generic domain name enjoys these benefits… because she was fortunate (or savvy) enough to be the first to appropriate a particularly valuable piece of online real estate.”
— Nat Cohen (@domainarts) June 30, 2020
There has been quite a bit of discussion about what the case means for domain registrants snd how it will impact the domain investment business. Domain investors and industry participants have been discussing the ramifications of the decision. Notably, domain industry attorney John Berryhill and ICA general counsel (and industry attorney) Zak Muscovitch both shared differing opinions about what the decision means for domain investors and generic domain names. Zak published an article with some of his thoughts, and John has been sharing on Twitter and NamePros (I also invited him to share his thoughts in a guest article).
From my non-legal perspective, there seem to be two possible outcomes from this SCOTUS ruling. On one hand, domain registrants may have a better chance of getting a trademark for a generic domain name, which could make buying one more appealing. This could increase the demand and value for great generic .com domain names.
On the other hand, the decision could potentially devalue some generic domain names if a trademark is filed for a very similar domain name, making it less likely someone will be able to buy and use a similar domain name. As John has pointed out, “Booking.com” is now similar to “Marriott” from a trademark sense, so a third party could be less likely to want to buy and brand Bookings.com (hypothetical example) just like a third party would be reluctant to buy Marriotts.com or MarriottHotels.com (hypothetical examples). Bookings.com seems like a very generic term, but could be more perilous to use now.
It is inevitable that we will see the Booking.com SCOTUS ruling cited in domain name disputes and UDRP proceedings. It is likely to cause issues for domain investors while also being beneficial to investors who hold valuable generic .com domain names. There will be reverberations felt throughout the industry, and it is going to take some time to see how things shake out for domain investors. In the meantime, it is wise to read the opinions of domain industry legal experts to understand the consequences of this decision.