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  • Trademarking Generic Domain Names Just Got Harder

    1. BY - Jul 24, 2009
    2. Policy & Law
    3. 14 Comments

    Court rules Hotels.com can’t be trademarked.

    A federal appeals court has ruled against Hotels.com in its bid to trademark its name. The court ruled that “Hotels” is generic and descriptive of its business.

    Here’s what it means for domain name owners:

    1. Generic domain names are harder to trademark and thus harder to protect. For example, Candy.com would likely not be able to get a trademark. However, the use of a generic term not related to the principle product on the web site (e.g. Amazon.com) can still be trademarked.

    2. It may be harder for Hotels.com and other generic domain owners to win under anti-cybersquatting and UDRP for typos, although UDRP panels are fairly liberal about assuming common law trademarks even when a federal government has rejected a trademark application.

    3. Filing a trademark for one your domain names as a preemptive measure may become more difficult.

    MediaPost points out that it would be easier for other companies to bid on Google Adwords for your domain name, too.

    It’s important to stress that the problem here is that Hotels.com is all about hotels, meaning Hotels.com was merely descriptive. This doesn’t mean that other domain names can’t be trademarked.

14 Comments
  • Why do you say, “it just got harder”?

    Case law?

  • Johnny – yes. Technically it has been hard, but…

  • Trademarking Generic Domain Names Just Got Harder – http://tinyurl.com/nnhybq

  • There is an upside to generic domains not being able to be trademarked. Those with trademarks have even less probability of being able to lay claim to (steal) a generic in another extension under this same Hotels.com ruling.

    For example, Apartments.com could not use trademark law to take away Apartments.US or Apartments.biz from their owners, and vice versa.

  • Trademarking Generic Domain Names Just Got Harder http://bit.ly/15vdco

  • @M.Menius
    Hallelujah!! Finally some common sense. I say get rid of urdp and the proposed urs and let common sense prevail for generic domain owners. It’s awesome to see this decision, imho.
    Best.

  • Best news I heared for the littel guys wipo is making a living snatching domain names from their wrightful owners giving them to the rich and powerful using 100 or so panalist who makes in access of $100,000 a year using the same argument the only thing changes in the decision is the Domain name.

  • Now watch……the dissenting panelist won’t get any more cases since he judged against the complainant.

    It would seem like they accidentally found someone to make qualified decisions. I’m sure this ruling does not sit well with many interests…..mainly in Dallas, Texas!!! ;)

    Get it? If not, you will soon….it’s unraveling really fast.

  • It is a very sensible ruling. One of the fundamentals of Trademark Law is not to give a single entity advantage over all others by allowing descriptive generic terms that do not distinguish the goods and services from all others.

    For exactly the same reason ICANN should not be allowing generic top level domains like .hotel. Because if new gTLDs are deemed to have competitive advantage they will in effect be awarding a small number of economically advantaged individuals and corporations private monopolies in perpetuity.

  • @gpmgroup – “awarding a small number of economically advantaged individuals and corporations private monopolies in perpetuity.”

    Certainly a valid point you make. I believe ICANN are so looking forward to profiting $185,000 per domain application that they would let any valid problem, principle, or potential damage to others interfere with their goal. It’s about financially compensating themselves under the pretense of bringing more “innovation” to the internet.

    If ICANN were genuinely concerned with avoiding damaging outcomes, they would …

    1. simply suspend any projected timeline for new tld release until all the anticipated problems are fully resolved, and

    2. Stagger the release of tld’s a few per year to allow for adequate market testing and assimilation.

    It’s impossibe to argue against this logic when one considers that new tld’s are optional anyway, and will unquestionably pose damaging trademark consequences to companies while also introducing multiple & confusing domain name redundancies into the internet domain name system negatively affecting consumer confidence.

    ICANN want to auction off every word in the dictionary for $185,000 each & they want to do it as quickly as possible. It’s just that simple.

  • >> ICANN want to auction off every word in the dictionary

    The Second Edition of the Oxford English Dictionary contains full entries for 171,476 words in current use.

    171,476 * $185,000 = $31,723,060,000

    Doesn’t even make a dent in the TARP.

    :)

  • @M. Menius

    I have a little more faith in ICANN. Like many organizations it has a lot of good people looking to do the right thing. There are a handful people that have perhaps had too much undue influence over the new gTLD plans and have perhaps allowed their commercial interests to cloud their judgment in their input into the new gTLD process but on the whole I think ICANN is a good organization looking to do the right thing.

    As the new gTLD process progresses I think the people at ICANN will begin to see just how much damage it will do if it is allowed to be rolled out as is (influenced by a handful of vested interests). The .xxx fiasco will look like a walk in the park compared the GNSO’s current plans for new gTLDs.

    Generic gTLDs like .hotels are an absolute minefield for ICANN. If one of the big players such as Intercontinental, Wyndham or Best Western etc. acquire the IP rights to .hotels (or the company which is awarded .hotels), they have sufficient market presence to use it to brand in all the major cities as each have over 4000 hotels. That’s London.hotels , Paris.hotels, NewYork.hotels once their competitors realize what they have been granted they are not going to be very happy, in much the same way as if their competitors had been granted Generic Trademarks IP rights in hotels.com

  • […] Someone should let Hotels.com know that it should use this trademark to bolster its argument that Hotels.com is more than just a descriptive name. […]

  • Thank god for this ruling. Of course there can only be one Hotels.com. This is not why they’ve spent large volumes of money. They have spent the money for one reason…so they could go after anyone and everyone with the hotel or hotels in or as part of their domain with udrp disputes and trademark infringement claims. Anyone who believes otherwise is on something very strong. I am someone who knows. I am the owner of a generic .net and my direct competitor in the same business who owns the corresponding.com which ranks #1 in google throughout all searches related to the industry has hired a lawyer to try to find a way to go after me. Again thank god for the hotels.com ruling. This company now knows they have no trademark case. They have tried to have phony customers call me to see if I would pass myself off as them to no avail and they still persist with even more nefarious schemes as prescibed by their hired guns. Why do they do this you ask? Because millions of dollars of venture capital is on the line if this company can create an online brand out of the generic term. All I want is to do business on the generic domain I rightlfully own. I have a branded corporation as well but the benefits to having both a brand with generics is enormous eg. Campbells Soup owning soups.com. Anyone who thinks that Hotels.com should receive a trademark is not living in the real world as this was nothing but a not so inconsipcuous attempt to eradicate competition and gain market share. Fortunately the courts saw right through this and pulled the curtains closed on them and the rug out from under them.

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