Here Zak posted the ICA opinion on Booking.com
Ultimately, the ICA decided to support the status quo. Currently
generic.com domains can, with massive advertising and promotion over time, become distinctive.
The USPTO wanted to change this and make a rule that 'it can never happen'. That new rule seemed unreasonable. I can see how the word HOTELS can *never* become monopolized by one company fas a trademark for hotel services no matter how much they spend promoting it. But I can see how HOTELS.COM *can* become a brand *over time with enough promotion*, and that it what is permitted now. But even if HOTELS.COM became a trademark for hotel services, I would expect the court to provide *very narrow enforcement* to it, such that it would not extend to the word HOTELS alone, thereby protecting the generic term. It is a pretty rare case where a
generic.com achieves trademark status, but it can happen and already does on occasion.
To reiterate, the ICA supported the *status quo* - how things are now. That means that what is lawfully permitted now, should continue.
The ICA has never been against trademark rights, just overreaching trademark owners. That has not changed. The ICA has never been in favor of cybersquatters, and indeed our Code of Conduct prohibits cybersquatting (See
https://www.internetcommerce.org/about-us/code-of-conduct/).
If someone registers B00king.com (two zeros) in order to divert Booking.com's customers and potential customers, that is currently actionable under unfair competition law and passing off, and would also be actionable as trademark infringement if Booking.com obtained a trademark. But if someone registered HotelBookings.com, that would be a completely fair and lawful registration as it does not infringe upon the very limited rights that Booking.com would have (their rights would not be to the parts of the mark, i.e. to BOOKING alone, but only to BOOKING.COM as a whole), even if it were permitted a trademark under the current law after proving acquired distinctiveness through extensive advertising and promotion.
Also consider extensions beyond .com. Should CANDY.CLUB for candy sales never be permitted to be trademarked? How about CANDY.GURU for candy sales? The USPTO's new proposed rule would prohibit any generic.TLD as a matter of course, regardless of the degree of acquired distinctness or the impression of the domain name as a whole including the TLD. That being said, CANDY.COM can't just get a trademark easily. It would need to show that it ceased meaning to the general public that it was a site about candy, and had become, through extensive advertising and promotion, identified with a particular business. And if it did get a trademark, it wouldn't be able to use it to take the generic word Candy out of the English language or prohibit it from being used in a domain name.
Now, that being all said, I can appreciate that this is a difficult issue and the ICA did indeed struggle with it. For a case to get to the Supreme Court of the United States, it generally means that it is a difficult issue and that there are many perspectives on it, all of which are legitimate.
You can read the ICA's brief here:
https://www.internetcommerce.org/internet-commerce-association-files-supreme-court-brief/.
This was the first time that the ICA filed a brief with the Supreme Court of the United States.
https://www.namepros.com/threads/is-ica-your-friend.1179294/#post-7656996