@jberryhill
Firstly, huge thanks for expanding on the topic, really appreciate it.
The entire point here is that Booking.com IS A BRAND TM.
"BOOKING.COM" will soon be (as soon as the USPTO acts on this) a registered trademark - just like "HILTON" is a registered trademark.
Ok, so now here's a follow up:
a) Booking.COM itself defined their brand as one containing .COM - all other TLDs are excluded from any potential litigation/TM infringement. Correct?
b) "Booking" itself is a generic, Booking.com until now was therefore a generic domain, doesn't this ruling set a precedent that by establishing Generic.COM as a TM, we've got a whole new process where one loses it's right to sue *&*Generic.com, because you've decided to shift your Generic.generic to a Brand TM?
i.e "Hilton" started as a brand, therefore then got a TM, and is now able to protect its brand by going after those who try and abuse it (HiltonHotels.com)
Booking.com started as a generic "Booking", on a legacy .COM extension (going historically, there's not been much choice actually for companies to use a different extension) - thus being a "Generic.Generic" in an overall view.
Surely now there has to be a change that will determine that you can't suddenly use "Generic.Generic" to force out almost three decades of how Internet works - especially if we take into account that GenericGeneric.Generic may just as well do the same and TM their domain as a brand. (HotelBooking.com, TravelBooking.com etc)
The entire point here is that Booking.com IS A BRAND TM.
That is precisely the argument being made as of yesterday in a UDRP I am defending. GenericPhrase.com expired and was auctioned. The previous owner is now claiming that this decision now makes their former GenericPhrase.com a trademark, and they are entitled to keep the domain name whether they pay the renewal fee or not.
Just wait until that logic is applied to the registrars who make money from the expired name auctions.
So, to me this is a straight BS, just by owning a domain name GenericPhrase.com, it doesn't mean that you suddenly have a TM. You still need to apply for it, prove that it actually is, and only then you can claim it. I can't suddenly claim that I have a TM on my Generic/Phrase.com just because I own the domain.
if you have drink.com and are looking to sell it, and someone later obtains a trademark right in “drinks.com” for a site related to drinks, you’re screwed.
Your domain is now worthless. You can’t develop it for drinks, and you sure as hell can’t sell it to anyone else who wants to use it for drinks. Your buyer doesn’t benefit from your priority because you cannot convey any goodwill in a “for sale” page to someone who wants to use the name for its dictionary meaning.
(...)
So, this notion of “it makes generic names more valuable” completely IGNORES the fact that each generic domain which becomes a trademark renders several others to be completely worthless.
The ICA isn’t going to tell you what happens to the value of your bicycle.com or bicycler.com, when someone comes along and obtains a trademark for bicycles.com.
Now, and this ties up with the above Generic.Generic, and that there's a definite need to set boundaries that if you decide to TM your Generic.Generic, then you lose the right to sue other Generic.Generic - however I realise that that process doesn't exist, that thought is not developed, and this decision has opened a whole can of worms.
Personally, the way I see it is either
1) new set of boundaries is going to be set when it comes to enforcement of Generic.com TM -> in this case I can't see how Generic.com would have more value than it has now (personally I hope this will be the case)
2) no new boundaries are set -> we're in for a shitstorm where any Generic.com can now put their case toward getting a TM, sue other *&*Generic.com and that's where we're either f*cking up a lot of businesses, or during the trials the new set of boundaries will be established.
Again, thanks
@jberryhill for all the insights and any further clarifications!
Al