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news Booking.com case picked up by Supreme Court

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sarah.kate

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So what does that mean exactly? I am gaining an understanding of the obvious but do they own the whole phrase as a .com? Or are you implying you don’t think my question is applicable since we are talking about domains not words. I just do not know enough about it but it’s a very interesting topic to me as I learn. If a song or movie has a word in it they have trademarked can I get in trouble for having a domain with the word? Such as Deniro and the movie “Casino”? Depending on some of this I need to be spending more at the USPTO than on new domains getting phrases!?
In my opinion, that means that you can get problems with a domain containing "Disney" because that solely word is already trademarked, and Disney is a very popular and known company by everybody. So they can argue that you have registered the domain in bad faith.
 
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So what does that mean exactly? I am gaining an understanding of the obvious but do they own the whole phrase as a .com? Or are you implying you don’t think my question is applicable since we are talking about domains not words. I just do not know enough about it but it’s a very interesting topic to me as I learn. If a song or movie has a word in it they have trademarked can I get in trouble for having a domain with the word? Such as Deniro and the movie “Casino”? Depending on some of this I need to be spending more at the USPTO than on new domains getting phrases!?

DisneyVideoGames.com infringes Disney trademark (obvious)

HotelBooking.com infringes Booking.com trademark (certainly a potential)

The issue is that we don't know what it will mean for the future. No company has been granted a trademark that contains a generic word + .com before, so who knows how this will all play out.

I don't think they are seeking a trademark to stop t-shirt sellers though.
 
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Anyway, really, I am just posting my own opinion. I am not a lawyer.
The issue is that we don't know what it will mean for the future. No company has been granted a trademark that contains a generic word + .com before, so who knows how this will all play out.

I don't think they are seeking a trademark to stop t-shirt sellers though.
OK, if this is true, then for me better to NOT allow the "booking.com" trademark.
Maybe I am wrong and if it's for a better protection for domain owners to not allow that trademark, of course I agree with this.
 
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In my opinion, that means that you can get problems with a domain containing "Disney" because that solely word is already trademarked, and Disney is a very popular and known company by everybody. So they can argue that you have registered the domain in bad faith.
Thank y’all for the replies. Well I didn’t buy anything in bad faith so I kind of feel like ICANN should prevent the “obvious” from being sold....I guess now that I have started to read some more it makes sense but it is a fine line in a lot of instances as far as I can tell so I may end up at SCOTUS one day. Disney is one thing but how much can some monster size companies monopolize?
I may Trademark Strippers and a couple of cities today;)
 
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is there a guideline to this? I don’t think there is a trademark lawyer in Alabama! Why would a registrar sell something if it’s blatant to someone who is a novice especially?
There's a Lawyer in this forum. You can read some of his posts, so you can get more informed about the issue.

https://www.namepros.com/threads/booking-com-trade-mark-could-be-blocked.1162619/

https://www.namepros.com/threads/what-about-mens-jewerly-store-tm.1141717/#post-7282016


https://www.namepros.com/threads/trademark-check.1105767/#post-6943007

https://www.namepros.com/threads/domain-registered-before-trademark.542846/#post-3221160

https://www.namepros.com/threads/trademark.1012714/#post-6103778
 
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Imagine being able to trademark a name because you added a .com :facepalm: lol
 
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the ending ".com" is never part of a trademark.
I agree, this fake trademark should be cancelled.


Li-Ka-Shing, the owner of Booking.com should know already how trademarks work...

https://en.wikipedia.org/wiki/Li_Ka-shing
 
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Apparently there are several other companies that were able to get their .com trademark, so I was wrong about that. Here are some of the ones mentioned in the petition by Booking.com:

Staples.com
Weather.com
Ancestry.com
Answers.com
Scuba.com
LOCAL.COM
WORKOUT.COM
DEALER.COM
DIAPERS.COM
SKI.COM
Entertainment.com
register.com
tutor.com
dictionary.com

I also found this footnote quite interesting:
5 Furthermore, while the PTO expresses concern for “competitors operating domain names such as ‘roomsbooking.com,’ ‘hotelbooking.com,’ ‘ebooking.biz,’” and ebooking.com, notably, none of these entities opposed Booking.com’s applications when they were published for opposition.
 
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Thanks for sharing this.
 
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That is bullcrap... If booking is a generic term, then so is apple, so is amazon and other fruits / rivers or anyother trademark that is a general term.
 
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If booking is a generic term, then so is apple, so is amazon...

This is another common domainer misconception about trademarks. Trademarks are not monopolies in the trademark terms. It is useful to think of a trademark as having two parts:

(a) the term itself PLUS (b) the goods or services for which it is a trademark.

In other words, when someone say "X is a trademark", you should ask yourself what is it a trademark for.

The word "apple" is a generic word for apples. The trademark "apple" is a trademark for computers, music services, and the other various goods and services of the well-known computer company.

The word "tide" is a generic word for what the gravity of the moon and sun do to the sea. The trademark "tide" is a trademark for laundry detergent.

The point that cipcip is missing is that you cannot get a trademark for "apple" to sell apples.

You cannot get a trademark for "bud" to sell flowers. You can get a trademark for "bud" to sell beer.

Now, there is an additional layer of considerations when we are talking about marks that are famous or inherently distinctive. A famous mark would be, for example, Coca-Cola. If you were to use Coca-Cola as a brand for, say, shoes, then you would have a problem. That mark is so well known that its use on just about anything would probably be understood by consumers as having originated with the soft drink maker. Similarly, inherently distinctive marks, such as made-up word like XEROX, have no other meaning than as a reference to the goods or services of that company.
 
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Thank you @jberryhill

That is a real good explanation and really helpful for other domainers.

Thanks,
Cristian
 
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Are the generic words + dotcom examples wordmarks or figurative? Seems like this information was omitted in the article.
 
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thx

very interesting read

every TM should be the same
 
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Are the generic words + dotcom examples wordmarks or figurative? Seems like this information was omitted in the article.

I looked through TESS and found these:

Staples.com - typed drawing, which I think is the equivalent to a standard character mark (word mark)
Weather.com - word mark
Ancestry.com - word mark
Answers.com - word mark
Scuba.com - word mark; the registration for this one actually appears to be cancelled according to the latest office action (10/8/19), it says it was issued inadvertently.
LOCAL.COM - word mark, but no longer active
WORKOUT.COM - word mark
DEALER.COM - word mark
DIAPERS.COM - word mark (TM notably does not cover diapers or diaper cream, only OTHER baby products)
SKI.COM - word mark
Entertainment.com - word mark
register.com - word mark
tutor.com - word mark (TM for research and reference services, not tutoring)
dictionary.com - word mark (TM for online games and advertising services, not for word definitions)

I would think the closest one to being as generic/descriptive as booking.com (for booking services) would be diapers.com. And they specifically exclude diapers and diaper-related products in the covered goods and services.
 
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This is another common domainer misconception about trademarks. Trademarks are not monopolies in the trademark terms. It is useful to think of a trademark as having two parts

The word "apple" is a generic word for apples. The trademark "apple" is a trademark for computers, music services, and the other various goods and services of the well-known computer company.

The point that cipcip is missing is that you cannot get a trademark for "apple" to sell apples.

So you’d agree that booking.com should not be awarded a TM for the sole purpose of “booking” reservations?

My take is that they absolutely should not be able to hold a TM for such a service.
 
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