Court rules that Booking.com can be trademarked.
In an 8-1 ruling, the Supreme Court of the United States ruled today that Booking.com can trademark Booking.com.
For background on the issue, listen to DNW Podcast #285.
Booking.com sought the trademark, only to be rebuffed by the U.S. Patent and Trademark Office, which argued that it’s generic. The USPTO argues that adding .com to a generic term—like adding “Company”—can convey no source-identifying meaning.
The Supreme Court disagreed, writing:
That premise is faulty, for only one entity can occupy a particular Internet domain name at a time, so a “generic.com” term could convey to consumers an association with a particular website.
Furthermore:
Under these principles, whether “Booking.com” is generic turns on whether that term, taken as a whole, signifies to consumers the class of online hotel-reservation services. Thus, if “Booking.com” were generic, we might expect consumers to understand Travelocity—another such service—to be a “Booking.com.” We might similarly expect that a consumer, searching for a trusted source of online hotel-reservation services, could ask a frequent traveler to name her favorite “Booking.com” provider.
So under limited circumstances, companies can trademark a generic term + .com (or perhaps another top level domain).
But that trademark won’t grant the company protection of the generic term of the second-level domain. Booking.com acknowledged that the Booking.com mark would be weak. It will also not allow it successfully go after anyone who uses the generic term ‘booking’ in their mark.
The court wrote:
Guarding against the anticompetitive effects the PTO identifies, several doctrines ensure that registration of “Booking.com” would not yield its holder a monopoly on the term “booking.”
In fact, Booking.com said it would not go after companies such as ebooking.com, or others that use the term in their name or domain name. It seems that the protection this trademark will provide is against someone, say, promoting themselves as booking.com on their website or naming their hotel Booking.com.
The full decision is here (pdf).
“In fact, Booking.com said it would not go after companies such as ebooking.com…”
Whether they said that makes absolutely no difference whatsoever. They can, and probably will. It’s not a binding commitment on them, and certainly not a condition that applies to any other company similarly situated.
However, eBooking.com has a senior trademark, and has been using “ebooking.com” in commerce longer than Booking.com has. So, I’m curious to know what you mean by “companies such as ebooking.com” which have been in business longer than this company has been using the booking.com domain name.
I did mean other companies with booking in their name, regardless of when they were formed. But I might be naively taking them at their word for how they argued in front of the Supreme Court.
The important question is whether someone has “Booking.com” in their name, not just the SLD.
For instance, let’s assume:
1. HotelBooking.com is available to register now and someone plans to go into business as “HotelBooking.com.” They are screwed, yes? And if so, then that’s really bad.
2. Someone registers TheRealBooking.com and goes into business under that name. Pretty inconceivable “Booking.com” would leave them alone plus be unable to do anything about it.
P.S. I.e., I say the above because in my view it’s kind of a given they can’t claim exclusive rights to just the SLD itself.
PPS:
“But I might be naively taking them at their word for how they argued in front of the Supreme Court.”
Oh yes – and if you are, then disabusing yourself of a mistake like that is critical. Like not just believing the current bs about Russia and Afghanistan without mountains of incontrovertible proof after a lifetime of being lied into wars, quasi wars, and boogeyman stoking, as if we haven’t just experienced a lifetime of that, which I’ll bet you $10,000 will never, ever come…
There’s only one reasonable solution to all the domain name disputes which are eating up so much time and energy and resulting in so many people losing their domains for no good reason, imo, and that’s to allow companies to sue for trademark infringement when a domain is used in an infringing way, but to get rid of all domain usurpations – except as an asset which can be ordered auctioned to help satisfy a judgment.
That’s the only way there can ever be a healthy domain market, imo, especially when buying a domain “resets the clock” with regard to usurpation actions.
Would cut down on your business, though…
What about Booking.com typos and other typos of generic terms that could get trademarks now?
Well, I have http://www.jewlry.com, did this court take that into consideration other then the fair use doctrine? Just wondering.
Your current names pre-date trademark registration, need all 3 factors to win in a case in udrp, but if they want it they will get it at higher court if the lose at that level. This is also for US only. How do they go after anyone if they just got trademark and win in a udrp. Here is where they save millions google now must stop competitors from bidding on the keyword term booking.com now they have a trademark. Saves them millions. Before they could bid on it as they had not TM.
So now, what happens when you buy a .com domain which has been trademarked?
Are they going to leverage you to pony up extra for the trademark too?
Because along with the domain, won’t you need the trademark too now?
Because technically, unless you buy their trademark, you can’t operate the domain too. Unless you like risking SOMEONE filing a UDRP against you and taking ‘your domain’ right back.
Suddenly who’s your daddy is the trademark.
Better research and get all the assets ‘tied’ to your domains folks.
Yes. I believe so. This is great news! Everything is great! This is no bother, really!
The domain name trademark floodgates have been opened!
Also, Booking.com just woke up the sleeping giant (US Government).
Gone are the days of the domain industry flying below the Government’s radar!
Whether we like it or not, the sun is setting on the domain Industry.
We’ve passed the golden age.
Regulation is coming.
The ink is not even dry, and I already have a “supplement” from a nitwit complainant in a UDRP arguing that the generic phrase at issue is a trademark because of this decision.
oh dear
Will you send me your response to it?
Book(ing) ’em Danno!
Booking.com Registered On:1998-04-17
HotelBooking.com Registered On:1996-06-08
Looks like Booking.com unable to claim HotelBooking.com which is registered on 1996.
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 if that is accurate…
…It would seem the USPTO can still just reject applications and put the onus on the applicant to adjudicate their case.
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.
I am wondering if the USPTO will make them put a disclaimer on the term booking,that would prevent a lot of future lawsuits. I have a domain that a company tried to buy cheap, they then proceeded to TM but had to put a disclaimer for the term,they abandoned the TM.
Andrew, their claims about who they would or would not go after are as binding as the promises of a ten year old to walk and feed a dog every day if Mom and Dad get one. You end up with a skinny dog and poop all over the place.
If anyone is puzzling over whether this is good news or bad news, take a look at historical UDRP decisions involving these kinds of claims, and ask yourself who it would 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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