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
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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