legal SCOTUS on domain names - Booking.com wins!

[GeorgeK]

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/

 

[jberryhill]

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.

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.

 

[Masay]

At least, a Good news for generic .com investors

 

[NorthernDomains]

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.

Most people here don't understand the implications.

 

[biggie]

Most people here don't understand the implications.

Hi

i agree -

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

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

imo...

 

[tonyk2000]

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.)?

 

[Reddstagg]

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.

Doesn't the fact that we only 'rent' the domain name each year and don't physically own them as an asset mean that we as the domain investor would not have claim to a trademark, but the the entity that actually owns them in law may indeed have a claim?

 

[Samer]

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.

Thanks for sharing, @jberryhill

It seems like the Supreme Court went out of way add tough conditions to fight “generic” TM

i think the other side was ”losing” and had “fish” for this ruling, since they had nothing; But you’re right, the repercussions are already felt.. Thanks for sharing!

Samer

 

[jberryhill]

Doesn't the fact that we only 'rent' the domain name each year and don't physically own them as an asset mean that we as the domain investor would not have claim to a trademark, but the the entity that actually owns them in law may indeed have a claim?

No. If you own a building, and I rent space in it for my restaurant, which gets five star reviews for the quality of the food there, then, no, you do not own the value of that goodwill in the reputation of my restaurant.

This is not about the domain name. This is about consumer recognition in the brand "booking.com" having secondary meaning as an indication of quality of this particular business - and not as an indicator that "this is a booking site in .com".

It's also worth pointing out that the scope of this decision is limited to whether "if someone presents a one-sided pile of evidence to the USPTO during prosecution, can they register a mark?" The comments made in the decision about the scope of the mark, and the claims made by booking.com about who they would or would not go after, are not binding on anyone.

And anyone who thinks those side comments or promises have any bearing on what UDRP panelists will do, then they are simply insane.

If Booking.com walks into a UDRP proceeding against, say, TravelBooking.com with a registered mark for "Booking.com" (assuming that travelbooking.com is junior), then they are going to win.

And they are going to win for the same reason that Hilton wins against HiltonHotels.com.

The UDRP analysis is simple:

1. The mark is "Booking.com".

2. The domain name merely adds the relevant descriptive word "travel" to the mark "booking.com".

3. Booking.com provides travel booking services under the mark.

Therefore, the domain name travelbooking.com is confusingly similar to the mark.

ANYONE with the most rudimentary knowledge of the UDRP knows that is how the analysis is going to go down.

 

[jberryhill]

This is like the NRA celebrating the prevention of laws that would make it easier to take guns away from crazy people. If you aren't crazy, and don't have a gun, there's nothing in it for you other than increasing your odds of being shot by a crazy person with a gun.

The eyewash over "we won't go after names like travelbooking.com" is as binding as a ten year-old promising that if we get him a puppy, he'll feed and walk it every day.

In short order, we'll have a bunch of mean skinny dogs and piles of shit all over the place.

Someone with something you don't have was just awarded something you don't qualify to get which entitles them to go after people. The way that dynamic tends to work out is like the basic rule of Lifetime movie plots - if you aren't the psycho, then you're a victim.

 

[Sutruk]

If Booking.com walks into a UDRP proceeding against, say, TravelBooking.com with a registered mark for "Booking.com" (assuming that travelbooking.com is junior), then they are going to win.

And they are going to win for the same reason that Hilton wins against HiltonHotels.com.

The UDRP analysis is simple:

1. The mark is "Booking.com".

2. The domain name merely adds the relevant descriptive word "travel" to the mark "booking.com".

3. Booking.com provides travel booking services under the mark.

Therefore, the domain name travelbooking.com is confusingly similar to the mark.

ANYONE with the most rudimentary knowledge of the UDRP knows that is how the analysis is going to go down.

So, it shouldn't be so hard to add a "Generic.com" category to the UDRP rules, where "Generic.com" should be limited to that name, no more and no less, as it is not in any case a distinctive or made up name.

Just my opinion, I am not a lawyer, just trying to apply the common sense here.

 

[Samer]

So, it shouldn't be so hard to add a "Generic.com" category to the UDRP rules, where "Generic.com" should be limited to that name, no more and no less, as it is not in any case a distinctive or made up name.

Just my opinion, I am not a lawyer, just trying to apply the common sense here.

It seems the Judges did. 8-1 is crazy.

 

[jberryhill]

So, it shouldn't be so hard to add a "Generic.com" category to the UDRP rules

The UDRP rules will never be amended in a manner that is favorable to domain registrants, for reasons too complicated to quickly describe. To put it briefly, in the relevant ICANN working group discussing the subject, domainer interests are outnumbered by around 80 to 1.

And this will NEVER happen:

where "Generic.com" should be limited to that name, no more and no less

That defeats the whole purpose.

They didn't go after a trademark registration in "Booking.com" in order to protect "Booking.com". They already have the domain name. The trademark registration isn't needed for that. The only reason to have the trademark registration is to go after things which are NOT "Booking.com".

Just what those things might be, remains to be seen.

 

[Lega.cy]

Ok, can someone actually help me out here, as I don't think I fully understand the implications.

1) Retrospective action

If we take the case of Booking.com, who is it they can actually now go after? Ebooking.com? xxxbooking.com? booking.net? booking.online?

I always was under the impression that it becomes a TM infringement if the domain name was registered/is being used for a specific purpose to benefit from an existing TM - but in Booking.com case, if eBooking.com was functioning and operational before this TM decision was made, then they are not in any way, shape or form under threat.

This poses a question, how can any generic now register their TM generic.com, and then retrospectively go after others / make a claim?

I could potentially see how this would apply for all the ***booking.com domain names registered from the day of TM ruling, but not before?

2)) "Trademarks will persist so long as the owner continues to use the trademark. Trademark section 8 requires the owner to provide evidence that the trademark continues to be in use."

- The way I understand this, if a domain name is dropped / sold, then the previous holder gives away their right to then claim the domain name in the future.

Now, in the cases of generic.com there are two scenarios:
a) name expires, is auctioned, sold - in this case the previous holder can argue that due to XYZ reason they forgot/were not able to pay

b) name is sold by the owner - in this case the owner loses the TM generic.com as it is no longer being actively used

____

Add:

@jberryhill You're mentioning the example of Hilton getting HiltonHotels, but I'm not sure how it applies in this case? Hilton isn't a generic.com, it's a Brand TM, and HiltonHotels directly infringing.

Wouldn't the more accurate representation be if the generic.com TM was Hotels.com, and they got HiltonHotels.com under their TM?

Thanks for any insights on this,

Al

 

[Reddstagg]

No. If you own a building, and I rent space in it for my restaurant, which gets five star reviews for the quality of the food there, then, no, you do not own the value of that goodwill in the reputation of my restaurant.

This is not about the domain name. This is about consumer recognition in the brand "booking.com" having secondary meaning as an indication of quality of this particular business - and not as an indicator that "this is a booking site in .com".

It's also worth pointing out that the scope of this decision is limited to whether "if someone presents a one-sided pile of evidence to the USPTO during prosecution, can they register a mark?" The comments made in the decision about the scope of the mark, and the claims made by booking.com about who they would or would not go after, are not binding on anyone.

And anyone who thinks those side comments or promises have any bearing on what UDRP panelists will do, then they are simply insane.

If Booking.com walks into a UDRP proceeding against, say, TravelBooking.com with a registered mark for "Booking.com" (assuming that travelbooking.com is junior), then they are going to win.

And they are going to win for the same reason that Hilton wins against HiltonHotels.com.

The UDRP analysis is simple:

1. The mark is "Booking.com".

2. The domain name merely adds the relevant descriptive word "travel" to the mark "booking.com".

3. Booking.com provides travel booking services under the mark.

Therefore, the domain name travelbooking.com is confusingly similar to the mark.

ANYONE with the most rudimentary knowledge of the UDRP knows that is how the analysis is going to go down.

Many thanks for taking the time to reply. I appreciate the fact that you may be busy. I've read through the Court documents a few times but there is a lot to be taken in for a mere layman and I'd be interested to see how things pan out further down the road and see whether they actually pursue someone with a perceived confusingly similar domain name.

Once again, thank you.

Regards,

Reddstagg

 

[jberryhill]

@jberryhill You're mentioning the example of Hilton getting HiltonHotels, but I'm not sure how it applies in this case? Hilton isn't a generic.com, it's a Brand TM, and HiltonHotels directly infringing.

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.

a) name expires, is auctioned, sold - in this case the previous holder can argue that due to XYZ reason they forgot/were not able to pay

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.

 

[jberryhill]

Here's a simple way to look at this.

Take these two UDRP proceedings (and I can provide you with many more):

—————-

https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2013-2118

Dynamis Limited v. Alice Stephen Uppal
WIPO Case No. D2013-2118

“The Complainant contends that the disputed domain name is virtually identical to its common law trademark BUSINESSESFORSALE.COM. The Complainant submits that the deletion of the letters “es” at the end of “businesses” does not distinguish the disputed domain name from the Complainant’s common law trademark.

…

The Respondent contends that the term BUSINESSESFORSALE.COM is descriptive if not generic and that it is not distinctive of the Complainant. The Complainant has not provided evidence suggesting that the Complainant’s long-standing use of BUSINESSESFORSALE.COM has resulted in the relevant public recognizing the phrase as exclusively denoting the Complainant’s services.”

—————

https://www.wipo.int/amc/en/domains/decisions/html/2002/d2002-1167.html

Snowboards-for-sale.com, Inc. v. Name Administration Inc.
WIPO Case No. D2002-1167

“Complainant alleges that it has common law trademark rights in the marks SNOWBOARDSFORSALE.COM, SNOWBOARDS-FOR-SALE.COM, SNOWBOARDS4SALE.COM and SNOWBOARDS-4-SALE.COM. . Complainant’s web business using the mark allegedly is consistently ranked as the top result on search engines when querying for snowboard equipment for sale and receives approximately 3 million page views per year.

…

Respondent asserts that the term “snowboards for sale” is not a trade or service mark of Complainant but a generic term.”

—————

In those two UDRP decisions, does this decision help the Complainant or the Respondent?

 

[jberryhill]

1) Retrospective action

Priority is an important principle in trademark law, and trademark rights are not retroactive.

But so what.

From the perspective of domainers, it doesn’t matter.

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.

Yeah, sure, you can keep your domain name, but you can’t use it or sell it. No one will buy it from you.

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.

They become worthless and unsellable.

This decision provides the basis to render countless domain names to be worthless junk.

 

[Keith]

@Kate Buckley is celebrating this and she’s not alone amongst “industry experts “. Just proves that we all have lots to learn...

 

[Grilled]

This decision provides the basis to render countless domain names to be worthless junk.

 

[pb]

@Kate Buckley is celebrating this and she’s not alone amongst “industry experts “. Just proves that we all have lots to learn...

We'll have to wait to see the outcome. I respect @jberryhill but I disagree with his apocalyptic vision. Of course I'm not an "industry expert" but I do have some domain disputes and court cases behind me (none lost), as well as many bounced C&D letters, so I'd like to think I know something about this field. Maybe in the USA it will be like @jberryhill predicts, I won't argue about that, but I still doubt that.