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Is ICA your friend?

Labeled as question in Legal Discussion, started by Don Gondon, Mar 1, 2020

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  1. Don Gondon

    Don Gondon Established Member

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    As reported by TLDInvestors.com (as a follow up to https://www.namepros.com/threads/wi...n-the-u-s-court-on-behalf-of-the-ica.1178011/), the Internet Commerce Association is acting in favor of the Booking.com's attempt to have "booking.com" trademarked.

    Should the Booking.com succeed, they are going to be significantly empowered to fight anyone who also happens to have a ...booking.com domain name, like NYВооking.соm or ТоkуоВооking.соm or ТоtаlВооking.соm etc. (no affiliation with the mentioned domain names or their owners, names are masked from index, these are only for the sake of example)

    Its not hard to understand why the ICA supports this – most of their members are fat cat domain investors who have some of the very best single word .com domains, and if the big business sees the opportunity for monopolizing certain industries in this, the value of such single word domains is going to rise dramatically.

    However, not so much benefit to the owners of prefix+word.com or word+word.com domains and the like.
     
    The views expressed on this page by users and staff are their own, not those of NamePros.
  2. Samer

    Samer Top Contributor VIP

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    Booking.com is powerful.

    Used to be “Priceline” before the rebrand.

    Stock’s trading at $1,695.66 for 1 share BKNG

    Samer
     
    Last edited: Mar 1, 2020
  3. bmugford

    bmugford www.DataCube.com PRO VIP ICA Member ★★★★★★★★★★

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    I am an ICA member and I share some of the same concerns about this.

    I don't really know all the details about this case, but I reached out for some clarity on this issue and the thought process behind it.

    I kind of understand both sides -

    1.) If you could TM generic terms in .COM, it could add value to them.

    2.) However, at the same time, if you can TM them in .COM it could block other people from legitimately using a generic term.

    My specific question in this case is what is the end game of Booking.com here? Are they trying to get a TM to then go after other legitimate services using the obviously generic term "booking" for the generic use? If so, that seems like a massive overreach to me.

    Brad
     
    Last edited: Mar 1, 2020
  4. bmugford

    bmugford www.DataCube.com PRO VIP ICA Member ★★★★★★★★★★

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    Here is some more information on this -

    https://www.internetcommerce.org/internet-commerce-association-files-supreme-court-brief/

    The full Amicus Brief listed there has more info.

    Interestingly, the EFF is on the other side on this -

    https://www.eff.org/deeplinks/2020/...ff-sides-pto-trademark-battle-over-bookingcom

    I don't really think it makes sense to have a rule that under no situation, can you TM a domain name. Sometimes that is your business name.

    However, I would be concerned in specific cases that the process could be abused though.
    This should never be allowed to be used in a way that would stifle fair competition.

    Brad
     
    Last edited: Mar 1, 2020
  5. .X.

    .X. In God I Trust VIP ★★★★★★★★★★

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    I disagree with any government allowing any generic term to be TradeMarked, such thought as TexasBooking or any name of the likes can be strickin down with legal action completely pisses me off to the third degree. such names can not take traffic or degrade Booking dot com in any form or fashion, I feel these type of people are on a freaking power trip to trademark something that they simply shouldn't be able have to full ownership of.

    The ONLY trademark names i support are names made by the owner, anything aside from a name being made by a company or person should not be able to be trademarked IMO

    I don't know very much about the ICA, I have heard the ICA is a good resource to be a member of. so i can only comment on the trademark of Booking dot com
     
    Last edited: Mar 1, 2020
  6. bmugford

    bmugford www.DataCube.com PRO VIP ICA Member ★★★★★★★★★★

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  7. .X.

    .X. In God I Trust VIP ★★★★★★★★★★

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    I reckon they wanted the dictionary to remove Booking as well for them, for people like this, I extend both of my middle fingers to you in a salute to your efforts.
     
  8. equity78

    equity78 Top Member TheDomains Staff TLDInvestors.com PRO VIP ★★★★★★★★★★

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    In Booking.com’s February 12 brief the company contends that the Lanham Act’s “primary significance” test requires “ascertaining, based on evidence, whether relevant consumers primarily understand the mark as a whole as the name of a category of goods or services. Sometimes the evidence will establish that a Generic.com mark is generic; sometimes not.”

    In the present case, Booking.com presented a report by statistician and survey research expert Hal Poret, who designed an industry-standard “Teflon survey” to measure whether consumers perceive BOOKING.COM as generic. “Poret controlled for ‘concerns that survey respondents might answer that any DOT-COM name is a brand’ by including Washingmachine.com, which has no associated brand, as a control,” said Booking.com’s brief. “While 30% of respondents identified Washingmachine.com as a brand, “74.8% … identified BOOKING.COM to be a brand name.”

    A second report by Dr. Sarah-Jane Leslie, a Princeton professor with expertise in linguistics, said that, “even if ‘booking’ and ‘.com’ were generic terms in isolation, consumers would not necessarily understand BOOKING.COM to refer to all hotel-reservation services.”

    The company also showed evidence of its “reputation, marketing, and commercial success” to further its case.

    More broadly, the brief explains that a finding for the USPTO could result in “a mass extinction event for registered trademarks,” since the Office has “spent decades registering marks that violate the government’s rule that a generic root term, coupled with ‘Company’ or ‘.com,’ can never be a trademark.”

    https://www.ipwatchdog.com/2020/02/19/booking-com-case-heats-supreme-court/id=119022/
     
  9. equity78

    equity78 Top Member TheDomains Staff TLDInvestors.com PRO VIP ★★★★★★★★★★

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    Others trying the generic .com TM

    Paddle.com Filing Date February 25, 2020

    [​IMG]
    Word Mark PADDLE.COM
    Goods and Services IC 009. US 021 023 026 036 038. G & S: Computer software for processing electronic payments and transferring funds to and from others; computer software for facilitating the purchase or sale of goods or services; authentication software, namely, software for authenticating identity; computer software for use in developing other computer software and software applications

    IC 035. US 100 101 102. G & S: Business and advertising services provided via the internet; business intermediary services for the sale and purchase of goods and services; mail order sales; retail sale services provided by means of a global computer network; sales promotion for others; business information services; computerised on-line ordering featuring general merchandise and general consumer goods; dissemination of advertising for others via an on-line electronic communications network

    IC 036. US 100 101 102. G & S: Financial services, namely, electronic transfer of funds via electronic communications networks; financial services, namely, electronic transfer of funds to purchase products and services offered by others, all via electronic communication networks; providing banking and financial services via a global computer network; clearing and reconciling financial transactions via electronic communication networks; foreign exchange, namely, foreign exchange transactions; electronic funds transfer; financial affairs and monetary affairs, namely, financial information, management and analysis services

    IC 042. US 100 101. G & S: Providing temporary use of on-line non-downloadable software for processing electronic payments; providing temporary use of on-line non-downloadable authentication software for controlling access to and communications with computers and computer networks; design and development of computer software and application programming interfaces (API); providing information in the field of computer software and computer software design and development; technical support services, namely, computer technical support services, namely, 24/7 service desk or help desk services for IT infrastructure, operating systems, database systems, and web applications; technical support services, namely, troubleshooting in the nature of diagnosing computer hardware and software problems; technical support services, namely, troubleshooting of computer software problems; technical support services, namely, remote and on-site infrastructure management services for monitoring, administration and management of public and private cloud computing IT and application systems; technical support services, namely, remote administration and management of in-house and hosted datacenter devices, databases and software applications; technical support services, namely, installation, administration, and troubleshooting of web and database applications; technical support services, namely, migration of datacenter, server and database applications; technical support services, namely, 24/7 monitoring of network systems, servers and web and database applications and notification of related events and alerts; technical support services, namely, technical administration of servers for others and troubleshooting in the nature of diagnosing server problems

    Standard Characters Claimed
    Mark Drawing Code (4) STANDARD CHARACTER MARK
    Serial Number 88809448
    Filing Date February 25, 2020
    Current Basis 1B;44D
    Original Filing Basis 1B;44D
    Owner (APPLICANT) Paddle.com Market Limited COMPANY UNITED KINGDOM 15 Briery Close; Great Oakley; Corby Northamptonshire UNITED KINGDOM NN188JG
    Attorney of Record Stacey J. Watson
    Priority Date February 18, 2020
    Type of Mark TRADEMARK. SERVICE MARK
    Register PRINCIPAL
    Live/Dead Indicator LIVE
     
  10. Don Gondon

    Don Gondon Established Member

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    Its not generic for the services they offer. While for Booking.com, it is.
     
  11. equity78

    equity78 Top Member TheDomains Staff TLDInvestors.com PRO VIP ★★★★★★★★★★

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    Good point
     
  12. .X.

    .X. In God I Trust VIP ★★★★★★★★★★

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    Talk about a cluster Fuck, good gosh, this is the kind of thing that can ground domainers out of business.
     
  13. Zak Muscovitch

    Zak Muscovitch VIP Member VIP ICA Member ★★★★★★★★★★

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    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.
     
    Last edited: Mar 1, 2020
  14. Welberch

    Welberch Restricted (50-70%)

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    ICA is not my friend. No.
     
  15. trelgor

    trelgor Established Member ICA Member ★★★★★★★★★★

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    The dotcom extension basically means that there is an entity online, most likely doing something related to commerce. It just underlines that aspect. That it is a business. Would ”Booking Company” be eligible for a trademark if it could be shown that it acquired distinctness?

    In my opinion no amount of marketing should make a generic term directly in relation to the business trademarkable. It is contrary to basic principles.

    If the definition slides to distinctiveness being possible just by adding an extension, Trademarks will be filed just to limit the options of current registrant. Nobody but the TM holder would touch it.

    The UDRP ”case law” as far as I know is that the extension is irrelevant. Is it or is it not?
     
  16. Internet.Domains

    Internet.Domains Account Closed (Requested) VIP

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    What has the ICA accomplished? What are the success stories? What has the ICA lobbied for and how were they a factor?

    I don't ask these questions to be harsh, but I am unaware of any success stories. As a result, when they (ICA) asks for money, where does the money go? Fancy letters?
     
  17. Samer

    Samer Top Contributor VIP

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    This. They need to lower pricing significantly. Still waiting for the reply equity78 thread.

    No clue why dont offer fee to join lifetime

    if you’re going to charge that much annually, would love follow how what did help Booking,

    Samer
     
    Last edited: Mar 1, 2020
  18. Internet.Domains

    Internet.Domains Account Closed (Requested) VIP

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    Yes. I still don't know what they do to help domain investors, beyond the fancy letters. I don't see any track record. I don't see how they are influential. Just not seeing it. Maybe someone will point out what I am missing.
     
  19. Samer

    Samer Top Contributor VIP

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    This day and age where everyone is outraged, legalese aside, wit such a huge case with such ramifications, “booking” domains, respect them picked side. Either way, someone get offended

    These are essentially three multi billion dollar companies. Booking least market cap ~$70B!!
     
    Last edited: Mar 1, 2020
  20. Internet.Domains

    Internet.Domains Account Closed (Requested) VIP

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    Yes. Would be nice to see them attack the .org and .com issues. Beyond fancy letters, of course.
     
  21. Zak Muscovitch

    Zak Muscovitch VIP Member VIP ICA Member ★★★★★★★★★★

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    @Internet.Domains sounds like you have some ideas on what the ICA should do. Give me a call tomorrow to share them with me: 1-866-654-7129.
     
  22. Internet.Domains

    Internet.Domains Account Closed (Requested) VIP

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    Will do. Thanks!
     
  23. equity78

    equity78 Top Member TheDomains Staff TLDInvestors.com PRO VIP ★★★★★★★★★★

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    Last edited: Mar 1, 2020
  24. oldtimer

    oldtimer Do some good for humanity and the environment VIP ★★★★★★★★★★

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    Why can't we all benefit from these ideas, why does it have to be a private conversation between only two people.

    Protecting special interest should not be the goal here, the mandate should be to protect all domain registrants.

    If a company already has a category defining .com within a certain Industry that means that they already have a big advantage over everyone else.

    In my opinion giving a trademark for that category defining .com will only open the door to monopolistic and predatory practices to stifle the competition.
     
  25. Internet.Domains

    Internet.Domains Account Closed (Requested) VIP

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    Thank you @Zak Muscovitch for taking my call today. Your passion for the domain community should not be understood, it is phenomenal!

    After a lengthy and detailed conversation I am truly impressed with the accomplishments, over a range of different issues, under your leadership. I am truly impressed!

    I feel the ICA is doing exemplary work for the domain investing community. Making progress, changes and setting higher standards for the benefit of the entire domain investing community. Again, I am truly impressed.

    Thanks for all you are doing for the domain community Zak!
     

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