Differing Opinions on Ramifications of SCOTUS Decision

16

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:

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.

16 COMMENTS

  1. didn’t they already own the domain and then build a brand around it.
    i.e. “Booking.com” – not just BOOKING.
    I like it.

  2. Of course people who own or broker one-word generic domains are going to be the most excited and positive about the supreme court ruling. But in reality where everyone else lives, the ruling opened a can of worms (Government, Lawyers, USPTO etc).

    Some domain values will go up, but most will go down now IMO, especially when someone owns a similar domain (Bookings.com) as someone else who filed a trademark like Booking.com.

  3. First, “generic” words always could be registered as a trademark if it develops secondary meaning. And booking.com always could register their “brand: which is “bookings”. That is their name, that is their brand. Nobody can claim exclusive use of .com which is not a brand it is an ADDRESS. So now could somebody now trademark bookings.net or bookings.org? Because what that SCOTUS just did was allow trademark registration of TLD’s! Bookings should have registered “bookings” as their trademark after achieving secondary meaning. So now can another party register bookings.org, bookings.net, bookings.TV? So with this this ruling — since Trademark registration require USE so you cannot “use” bookings.com to develop a Trademark unless you OWN the domain name bookings.com. And since Trademarks on a domain names booking.com would require you to own the domain you are trademarking. SCOTUS also stated: “OWNERS of generic #DomainNames enjoy additional competitive advantages unique to the #internet. Most importantly #DomainName ownership confers automatic exclusivity” So it seems these benefits as well as the right to Trademark these benefits can ONLY BE CLAIMED IF YOU OWN THE DOMAIN NAME you seek to register. And for a Trademark Registration you have to either show use or ITU (intent to use). Hopefully this decision will protect domain owners from REVERSE DOMAIN HIJACKING through the UDRP process and trademark litigation.

  4. Getting a trademark on Booking.com is a lot different then getting a trademark on any generic domain name. Booking.com is a a real company with tons of brand awareness. Try to get a trademark on a unused generic domain name and the courts will laugh in your face.

  5. This SCOTUS decision has hurt the value of one-word generic domains (singular and plurals) in all extensions, not just in .com alone.

    Two-word domains and multi-word domains (including Brandables and EMDs) are going to benefit the most because majority of these are trademark-able.

  6. I think I have heard the word “Conversation” a billion times this week…we need to
    start a conversation…blah blah

    So can legalzoom go after zoom now?

    generic one word domain are ambiguous!! Look at oyster, when I want to eat oysters, I thought of going to oyster.com but what the f do I get!!

    That why “BullS” site resonates to all the sites of the internet!!

  7. good work BullS
    Maybe we can “Re-Imagine” “Starting a Conversation” about “That’s a really good question”.

    Bottom line booking.com puts Generics back in the forefront 🙂

  8. Lemonade.com insurance company – that’s a generic beauty – they got the domain first – and very recently went public

Leave a Reply