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SCOTUS on domain names - Booking.com wins!

Labeled as legal in Domain Industry News, started by GeorgeK, Jun 30, 2020

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  1. GeorgeK

    GeorgeK Leap.com PRO VIP ★★★★★★★★★★

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    The Supreme Court of the United States (SCOTUS) issued its decision today in the United States Patent and Trademark Office, et al., v. Booking.com B.V. case. By an 8-1 margin, the court ruled that Booking.com could register a federal trademark for the mark “booking.com” despite the term “booking” (without the dot-com) being generic for the same goods and/or services. I expected this result (although not by an 8-1 margin; I thought it would be 6-3), so it was a positive outcome, in my opinion.

    Read more at:

    https://freespeech.com/2020/06/30/scotus-on-domain-names/
     
    The views expressed on this page by users and staff are their own, not those of NamePros.
  2. GeorgeK

    GeorgeK Leap.com PRO VIP ★★★★★★★★★★

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  3. TheBaldOne

    TheBaldOne Top Contributor VIP Gold Account ★★★★★★★★★★

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    WOW.

    I am not surprised by the decision ....... but by some of the wording reported of the SCOTUS reasoning in the article. This is going to be huge.
     
    Last edited: Jun 30, 2020
  4. Keith

    Keith Top Contributor VIP ★★★★★★★★★★

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    I’ll assume it’s acceptable for say, booking.us, for example, to provide the same service as the .com.
     
  5. Samer

    Samer Top Contributor VIP Blue Account

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    won wit caveat; booking admit weak protection

    Cant claim "Booking" without blatant infringe.

    "ebooking.com" safe; no doomsday scenario; See creative ruling; one of best outcomes IMO

    Samer
     
    Last edited: Jun 30, 2020
  6. equity78

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

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    Very interesting George, we talked about this it will be interesting to see how they try to deal with other names using booking somewhere in the domain name.
     
  7. GeorgeK

    GeorgeK Leap.com PRO VIP ★★★★★★★★★★

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    I expect that they will target domain names like "wwwbooking.com".
     
  8. Sutruk

    Sutruk Established Member

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    They have never filed a UDRP against any domain just for containing the word "Booking". Only once, and for a domain containing "BookingCom", it was for Bookingcom.xyz.
    wwwbooking.com could be a target because for obvious reasons. But not MyBooking.com or WhateverBooking.com, in my opinion.
     
  9. labrocca

    labrocca Top Member VIP ★★★★★★★★★★

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    Very interesting news. I may need to read the decision but I'll offer up a question for now.

    How much of the "dot" is part of this. In other words, would any other "Booking DOT Extension" look too similar if used in the same genre? Is it the DOT that makes it unique enough or does it require the full DOT COM?

    I gotta read the decision I suppose.
     
  10. TheBaldOne

    TheBaldOne Top Contributor VIP Gold Account ★★★★★★★★★★

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    Look at the wordings used.

    "Generic names are easy to remember."

    "Because they immediately convey the nature of the business"

    "the owner needs to expend less effort and expense educating consumers"

    "a generic business name may create the impression that it is the most authoritative and trustworthy source of the particular good or service"

    As a domainer I couldn't have asked or even prayed for better reasons to be given. Basically the SCOTUS has just handed out marketing and advertising worth millions to the domaining industry.

    I will await the full report (if anyone has it a link would be appreciated, thank you). I for one will find ways of including such in my marketing from now on.
     
  11. Don Gondon

    Don Gondon Established Member

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    I need to trademark my single word .co names, and then sue .com owners for infringement! How dare they include my .co names into their .com's!
     
  12. Jothan Frakes

    Jothan Frakes J VIP ICA Member Gold Account

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    @GeorgeK thank you for your dedication and vigilance in sharing things, as well as your attention to detail.

    #madrespect
     
  13. GeorgeK

    GeorgeK Leap.com PRO VIP ★★★★★★★★★★

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  14. TheBaldOne

    TheBaldOne Top Contributor VIP Gold Account ★★★★★★★★★★

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  15. Donnyd

    Donnyd Upgraded Member Gold Account

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    How would one win a udrp if all of the names that say are similar where registered before the trademark.
    booking.us or booking.co probably not I have no idea. But mybooking or whatever letter is different or word then no I would not think so. That would be a monopoly.
     
  16. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. PRO VIP ★★★★★★★★★★

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    And, as of 4:30 PM today, the decision is already costing one domain registrant money.

    I am currently defending a "dictionary word" UDRP proceeding. The case is fully briefed and before the panel.

    Sure enough, the complainant filed a "supplement" today arguing that the Booking.com decision gives them rights in the generic phrase at issue in the UDRP.

    While it is tempting to simply not respond, given the other fatal defects in the complainant's case, it is probably not best to leave the argument un-answered.

    So, as some blindly cheer this on for reasons that mystify me, rest assured there is one domain registrant who has already been adversely impacted - and the ink is not even dry on this thing.
     
    Last edited: Jun 30, 2020
  17. Keith

    Keith Top Contributor VIP ★★★★★★★★★★

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    I think it’s a terrible decision. Seems to me that the .com portion won’t hold much weight and they’ll try to claim Booking as a TM for “booking”.

    This is very bad imo and will throw the industry into a dark place.
     
  18. HappyW

    HappyW Collector VIP

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    Very good news. I tried to explain in a post a long time ago that “General + .com” can be registered as a trademark, but I don’t think it means they have the right to declare that “booking” TM belongs to them, in fact I think that if they use "Booking" in advertising to mislead consumers, they may face new legal proceedings. On the other hand, I also believe that .co and other TLDs may not be able to apply for trademarks because they are not part of VeriSign .;)
     
  19. Joakim

    Joakim SalesBusiness.com VIP

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    Interesting. Still not so sure what else. Looks like opinions are very well divided.
     
  20. pb

    pb Established Member ★★★★★★★★★★

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    Of course I don't know the specific case you mention, but for me the takeout form the SC ruling is that the domain as a whole (such as booking.com) is distinctive enough from its root (such as 'booking') that even though the root is a generic and non-trademarkable word (within its field), the domain itself can be trademarked. IMO it translates to that if someones uses a generic word/phrase in business and you have that word/phrase in .com, these are two distinct things and should be treated separately.

    Whether the ruling will be abused by booking.com by going after "similar" *booking.com domains, remains to be seen, but as it stands, I think it's more beneficial than harmful for the industry.

    Again, I don't know your specific case, but if the dispute is "some phrase used by a business" vs "that phrase in .com" then it's counter-intuitive to think that the ruling supports the claim, I would think the reverse is true.
     
    Last edited: Jul 1, 2020
  21. jberryhill

    jberryhill Top Member John Berryhill, Ph.d., Esq. PRO VIP ★★★★★★★★★★

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    Well, then I gather that everyone in the domain industry is going to stop trying to buy expired .com names, since they all remain trademarks of the previous owner - regardless of whether they pay their renewals on the domain name or not.
     
  22. Masay

    Masay Established Member

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    At least, a Good news for generic .com investors
     
  23. sircc

    sircc Established Member ★★★★★★★★★★

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    Most people here don't understand the implications.
     
  24. biggie

    biggie Top Contributor VIP ★★★★★★★★★★

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    Hi

    i agree -

    cases like this set precedents, for other cases, as @jberryhill alluded to.
    and you can bet your last dollar, that the :poop: will hit the fan and fly everywhere.

    and because of the ruling, I expect udrp filings to increase.

    imo...
     
  25. tonyk2000

    tonyk2000 Top Contributor VIP ★★★★★★★★★★

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    Maybe I'm missing something (needs to be further rethinked), but , on a spot view:

    - Registering domain with extension as a TM may be allowed to domain registrant and only to domain registrant, and with appropriate disclamer like "no claim is made to exclusively use <domain without extension>". Such a trademark should be terminated immediately if the domain name expires or changes hands. Extra rules should to be developed by TM offices to make sure that a prior registrant of an expired/reregistered domain would not be able to use the old TM in any aspect.

    (this way, it would not be practical to apply for such TMs, but, if somebody wants to spend $$$, why not?)

    - Trademarking of extremely common words like realtor or booking should not be allowed in any class

    - The above should apply to tm offices and laws in all countries, not exclusively U.S. where the booking .com case happens

    Would be interesting to find what, if any, other precedents do exist (worldwide and in U.S.)?
     
    Last edited: Jul 1, 2020

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