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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. equity78

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

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    Drink.com worthless? John you just blew a lot of minds there and some people might have shit their pants.
     
    Last edited: Jul 2, 2020
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  2. Samer

    Samer Top Contributor VIP

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    love passion both; favorite take Ars Technica; here is the piece in two posts; Good luck

    AC2E99F6-C5E6-4132-9C45-5FA22952B1FF.jpeg
    F41DF5B6-B14D-4DC1-A7C2-D05BF72DD904.jpeg
     
    Last edited: Jul 2, 2020
  3. Samer

    Samer Top Contributor VIP

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  4. HappyW

    HappyW Collector VIP

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    I agree with your point of view, and I think your point of view is very representative.
    Let us give some ideas for trademarks in the domain industry.
    Idea 1 : Change the domain as a trademark the rights.
    I think that the process of domain trademark application has two attributes: literal meaning and Internet access (this is just my personal expression), which is different from ordinary word and graphic trademark applications.
    The result of the UDRP's ruling is obviously only considering the situation when BOOKING.COM is used as a common trademark. In this case, e.g. THEBOOKING.COM will lose value and there is a great possibility of infringement.
    But imagine the review process for domain applications for trademarks, what if the review of Internet access is added? Then each domain will be an independent trademark, all the court needs to do is to divide the boundaries between each domain (that is, when a domain is a trademark, it should only has the right to protect its own brand from infringement, and should not have The right to exclude other similar domains).
    Idea 2: Add additional requirements when domain applies for trademark.(The domain must be attached with LOGO and apply for trademark at the same time.)
    The domain must be attached with LOGO and apply for trademark at the same time. When applying for a trademark at DRINKS.COM, it does not matter if DRINK.COM already exists. They can exist in the beverage industry at the same time, and consumers will distinguish their relationship through HTTP access and LOGO identification.
     
  5. DAN.COM

    DAN.COM Domain Marketplace Dan.com Staff VIP Gold Account

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    Hi John,

    You are the expert here, so thank you for sharing your point of view on this. However, I do have a specific question.

    Let's assume DAN.COM was not developed and was offered for sale. You mention, someone can go out there and get a TM for DAN.COM which would then hurt the asset we'd have for sale.

    However, why would the office actually give a third party which doesn't operate DAN.COM that TM? That part makes no sense. One would assume, that only the owner of DAN.COM can get the TM for DAN.COM and so it would give current owners of valuable domains more power not less.

    Or do you think, any random person from now on can register a (keyword).com trademark? I would be extremely surprised if the latter is possible or feasible because then one or more entities can now go out there and register all (keyword).com TM's and make million dollar assets lose their value instantly. I don't see this happening to be honest, while it does seem you're claiming this might happen with your Drink.com example.

    Thank you,

    Reza
     
    Last edited: Jul 2, 2020
  6. Alexej K

    Alexej K Established Member

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    @jberryhill
    Firstly, huge thanks for expanding on the topic, really appreciate it.

    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)

    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.

    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
     
  7. TheBaldOne

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

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    @jberryhill - Am I right in thinking that the only way to overturn this decision by the SCOTUS is for subsequently another case to be heard by SCOTUS and rule differently in the subsequent case?
     
  8. pb

    pb Established Member ★★★★★★★★★★

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    The funny thing is that booking.com already has 19 active registrations of "booking.com" as a word trademark around the world, including in the EU since 2011 and in the UK since 2013. So shouldn't the apocalypse as prophesied by some be happening for a few years already? :xf.rolleyes:
     
  9. pb

    pb Established Member ★★★★★★★★★★

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    Not an expert but I have a story that you might find interesting. :) A decade ago I fucked up by launching a website in January and applying for a trademark (word TM for a generic domain name, not unlike booking.com or dan.com) in May of the same year. Well, as it happened, someone else filed the same application already in February. We acted fast and filed a protest on the basis that they don't operate that domain name, but surprise surprise, they got the TM registered! So yeah, TM offices can be stupid like that. Eventually they (TM office) got to review our protest and proceeded to invalidate that TM and later we got our TM registered, but it was slightly stressful and not-so-slightly stupid. Also the whole process lasted for *years* (the first TM registered after two years, invalidated after four years and our TM finally registered almost seven years after filing).
     
  10. Zak Muscovitch

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

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    Indeed, the only UDRP case previously brought by Booking.com was in 2017 and as you pointed out concerned bookingcom.xyz : https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2017-0311

    And notably, this was >>before<< the recent SCOTUS Booking.com decision.

    In fact, the Complainant had registered trademark rights >>already<< back then ("The Complainant has registered BOOKING.COM trademarks in multiple jurisdictions, including European Union trademark registration number 008955353, registered from October 5, 2011, and International trademark registration number 1104711, registered from December 15, 2011").
     
  11. Zak Muscovitch

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

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    I would respectfully disagree. There is a vast difference between TRAVELBOOKING.COM and HILTONHOTELS.COM in the UDRP context, even if there were to be a registered trademark on BOOKING.COM (which there already is as a matter of fact, since 2011 in the EU and in other countries (See; https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2017-0311).

    The difference is of course that "HILTON" has no generic meaning whereas BOOKING does. "Travel booking" is a common descriptive phrase, whereas HILTON HOTELS is not apart from referring to the HILTON brand itself.

    If TRAVELBOOKING.COM were to be challenged in a UDRP, I would imagine that a savvy domain name lawyer would defend the registrant by quoting the Supreme Court in the Booking.com case, where it stated that "the doctrine known as classic fair use...protects from liability anyone who uses a descriptive term fairly and in good faith"...These doctrines guard against the anticompetitive effects...ensuring that registration of Booking.com would not yield its holder a monopoly on the term "booking". Booking.com concedes that Booking.com would be a weak mark..and is descriptive making it harder to show a likelihood of confusion". (https://www.supremecourt.gov/opinions/19pdf/19-46_8n59.pdf)
     
    Last edited: Jul 2, 2020
  12. Zak Muscovitch

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

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    Indeed, more participation from the domain name registrant community would be very helpful when it comes to ICANN domain name policy because as John mentioned, we are usually outnumbered :).
     
  13. Zak Muscovitch

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

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    I would say neither. For two reasons.

    Firstly, in both those cases the Complainant asserted a common law trademark over a common phrase and the Panel correctly found that the Complainant had not proven actual trademark rights over such phrases.

    The hurdle is and remains very high to prove trademark rights in a common phrase, both in the UDRP and in courts. To get a trademark over an otherwise generic.com would generally involve masses of evidence including survey evidence at great expense, showing that the generic.com was perceived by consumers to be associated with a particular brand and to not refer to the thing itself. Not any easy feat. The Booking.com case involved a plaintiff who was able to convince two lower courts that it had such evidence, unlike those two complainants who merely asserted, unsuccessfully, common law trademark rights.

    Secondly, the Booking.com case didn't change the law. In fact it maintained the status quo, i..e how things were before the case now remain. No new law was set out by the Supreme Court. For example, even before the Booking.com decision (and as mentioned by the Supreme Court), ART.COM received a registration for online retail store services featuring art, 11 years ago in 2009.

    Indeed, SCOTUS noted that "the PTO's own past practice appears to reflect no such comprehensive [per se] rule" against such registrations, and SCOTUS "discern[ed] no support for the PTO's current view in trademark law or policy".

    Accordingly, I think that the status quo was essentially confirmed, rather than any new approach created by the decision.
     
  14. Zak Muscovitch

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

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    I think it is crucial to consider the that the Booking.com decision really didn'y change the law when it comes to trademarking a generic.com, rather it essentially maintained the status quo. Even before the Booking.com decision, the situation (drink.com / drinks.com) that John mentions was a potential issue, since for example, ART.COM received a registration for online retail store services featuring art, 11 years ago in 2009.

    Indeed, SCOTUS noted that "the PTO's own past practice appears to reflect no such comprehensive [per se] rule" against such registrations, and SCOTUS "discern[ed] no support for the PTO's current view in trademark law or policy". What the Booking.com case was really about, was the PTO's attempt to create a new policy banning all generic.com from trademark registration, period. That was a new proposed approach and SCOTUS essentially found that this proposed new approach was wrong and the law should be how it has been to-date.

    Accordingly, I think that the status quo was essentially confirmed, rather than any new approach created by the decision.

    Non-use of a domain name while another party obtains a trademark for a similar term is a longstanding and continuing hazard for domain name registrants. Of course, the hazard is lessened when it comes to a generic.com because the threshold is so considerable for demonstrating that consumers identify the mark with a particular company. I don’t think this decision lessened that threshold at all. The difficult part as usual, is how the USPTO will handle claims of such consumer identification when it comes to generic.com's. I suspect that the USPTO will take a hard line and it will take courts to provide more guidance than what the SCOTUS provided in this case.
     
  15. GeorgeK

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

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    Here's a subtle thing that might have been missed: If Example.com is a TM, then the ".com" is an integral part of the mark itself, and can't be removed willy-nilly, when it's convenient for your argument. Thus, the plural of Example.com is actually Example.coms ("s" after the dot-com). To see this, consider if the mark was simply ".com" itself. What's the plural of ".com"? It's ".coms" (i.e. dot-com ---> dot-coms).

    In comparison, Examples.com is an entirely different and distinct animal. If "Example" by itself was the trademark, then "Examples" would be the plural of that mark. But, the holder of a TM for Example.com alone in its entirety doesn't have rights to variations of "Example" standing alone (i.e. as I said before, they can't just drop the .com from their argument when it's convenient, and then circle back and add it later on).

    The decision itself noted:

    So, I think consumers will learn to "carefully pick out" and distinguish Example.com from Examples.com.

    Of course, some overreaching trademark bullies will try to say otherwise, but I think there's a strong argument for coexistence.
     
    Last edited: Jul 2, 2020
  16. Zak Muscovitch

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

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    Indeed,on the Internet when it comes to domain names, small differences matter.

    For example, in the UDRP case of Bank of Am. Corp. v. Fluxxx, Inc., FA 103809, a complainant failed to prove “confusing similarity because it did not demonstrate that the public would be confused between its NATIONSBANK mark and the disputed domain name NationsBanking.com”, since small differences matter particularly when dealing with marks in a very crowded field, and particularly where the mark is otherwise descriptive

    Also see for example, America Online, Inc. v. Megaweb.com, Inc., NAF Case File No. A0504000463099: “In the Internet context, consumers are aware that domain names for different Web sites are quite often similar, because of the need for language economy, and that very small differences matter”, referring to Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th Cir. 2002) (finding that between the publications “Entrepeneur” and “Entrepenuer Illustrated,” the additional word is a “noticeable” difference); (“Similarity of marks or lack thereof are context-specific concepts. In the Internet context, consumers are aware that domain names for different Web sites are quite often similar, because of the need for language economy, and that very small differences matter.”).
     
    Last edited: Jul 2, 2020
  17. GeorgeK

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

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    I think ultimately, Booking.com (or other registrants of those kinds of very weak marks) can go after obviously abusive domain names, e.g.

    (a) wwwbooking.com (obvious typo squatting when people are actually looking for booking.com)
    (b) login-verification-booking.com (this domain name isn't registered, but if someone did register it and spammed it out, pretending to be Booking.com, and had "Booking.com" all over a phony login page looking to steal credentials).

    But, it would be an overreach to try to grab high quality domain names in the same neighbourhood that are inherently valuable and non-abusive. Those very weak marks should just coexist with one another.
     
    Last edited: Jul 2, 2020
  18. namelancer

    namelancer Established Member

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    This would apply not to all all expired domains, but only those which, prior to their expirey, operated as commercial websites identifiable as viable businesses offering products or services, ie by previously engaging in commerce activity that satisfied the necessary criteria of general trademark protection (irrespective of whether the trademark was registered, with annual fees being paid , or not) and which complied with the three pillars of a domain name registration policy:

    1. ''the domain name is confusingly similar to the complainant’s trademark''

    2. ''the registrant has no rights or legitimate interests in the domain name;''

    3. ''the domain name has been registered and is being used in "bad faith".
     
  19. namelancer

    namelancer Established Member

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    On another note, it raises a question in a potential hypothetical scenario of what would happen to the trademark protection of a TM-protected website should the registrant of the afore-mentioned website fails with renewal of the domain name in question despite sucessful payment of annual TM fees for the given time-period, or if the opposite is true, namely, a domain name's renewal is paid for many years in advance despite non payment of TM prolongation for the same time frame. While I'm aware that for a trademark to be viable it doesn't need to be registered, suficing for it to be just operational as a legitimate business provided all other conditions for trademark protection is met, but still... it many remaning questions abound.
     
  20. FlipperC

    FlipperC Established Member

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    how much booking.com pay for marketing to get this brand awareness and will anyone else be willing to do that?

    if not, why argue?
     
  21. Mytz.com

    Mytz.com Top Contributor VIP Gold Account

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    Does failure now mean failure forever?
    Will he apply for arbitration again in only a few months?
     
  22. Samer

    Samer Top Contributor VIP

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    See called SCOTUS all the time.

    Like POTUS is President of the United States
     
    Last edited: Jul 2, 2020
  23. Keith

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

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    Scotus
    POTUS
    Flotus.com
     
  24. oldtimer

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

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    I tend to agree with @jberryhill that this ruling is going to make many similar domains worthless. Even though technically other similar domains might be protected against TM overreach by a company that owns a trademark on a generic .com but those with street smarts know that there is a built in intimidation factor involved here that is going to scare away the potential buyers for similar generic domains since as we all know the average person or business is not versed on all the trademark laws and regulations and so the minute they hear the word TM they might shy away from taking a chance with investing in similar generic domains since they might not be fully aware of all their rights and the protections that the law extends to them in fair use.

    Also this ruling might give another excuse to the UDRP panels who were itching to throw domainers under the bus for the greater good in the past.

    We always assume that the Supreme Court makes the right rulings that are based on logic and compassion, but as the recent ruling in the abortion case indicates in many cases people's rights including the Unborn Children's are sacrificed for the greater good which in reality is what is good for some special interest.

    IMO
     
  25. Reddstagg

    Reddstagg Top Contributor VIP Gold Account

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    Good evening everyone,

    I've copied the following information from Wikipedia and I'd be grateful if someone who has more knowledge of this than me can confirm whether this is as it stands today. After posting the information, I'd like to raise a couple of questions relevant to this and the court case.

    A complainant in a UDRP proceeding must establish three elements to succeed:

    • The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
    • The registrant does not have any rights or legitimate interests in the domain name; and
    • The domain name has been registered and the domain name is being used in "bad faith".
    In a UDRP proceeding, a panel will consider several non-exclusive factors to assess bad faith, such as:

    • Whether the registrant registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark;
    • Whether the registrant registered the domain name to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, if the domain name owner has engaged in a pattern of such conduct; and
    • Whether the registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
    • Whether by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, internet users to the registrant's website, by creating a likelihood of confusion with the complainant's mark.
    The goal of the UDRP is to create a streamlined process for resolving such disputes. It was envisioned that this process would be quicker and less expensive than a standard legal challenge
     

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