Generic.com Domain Name Trademark Registration Following U.S. Supreme Court Ruling on Booking.com

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The commercial desire to adopt a generic.com is not surprising – these domain names are easy for consumers to remember and easily inform the consumer of the goods or services they offer. Consequently, generic.com domain names were previously bought and sold for very large sums. The 5 most expensive domain names that were made public reportedly sold for the following amounts:[1]

  1. AssuranceAuto.com — $49.7 million
  2. Insurance.com — $35.6 million
  3. VacationRentals.com — $35 million
  4. JetPrivé.com — $30.18 million
  5. Voice.com — $30 million

Registering a domain name in itself does not provide any exclusive right to prevent others from using a domain name or similar trademark. Thus, obtaining trademark registration for these domain names can provide additional value to trademark owners. However, it is very difficult to obtain registration of these marks.

The online accommodation booking agency Booking.com NV has encountered such difficulties in the United States, where it has been more than a decade since it first applied for registration of a Booking.com containing a trademark registered in the United States.

However, in a positive step towards obtaining registration, the United States Supreme Court ruled in June 2020 that the domain name Booking.com is not generic, bringing the online accommodation booking agency one step closer to obtaining trademark registration for Booking.com in the USA.

This decision is no doubt welcomed by companies that use a generic.com domain name as part of its brand image. However, in line with the Australian position, substantial evidence of use will still be required to obtain registration of the domain as a trademark.

Booking.com is not generic

decide that Booking.com is not generic was crucial to Booking.com NV’s ability to obtain trademark registration. Under US trademark law, generic trademarks are not eligible for federal trademark registration, regardless of the extent to which that trademark has been used. This is different from brands that are descriptionwho can obtain the registration if the applicant can show secondary significance.

In determining whether a mark is generic, the U.S. Supreme Court helpfully summarized the nature of the inquiry as follows:

“Whether ‘Booking.com’ is generic depends on whether that term, taken as a whole, means to consumers the class of online hotel reservation services. Thus, if “Booking.com” were generic, we might expect consumers to understand Travelocity – another such service – as a “Booking.com”. Similarly, we might expect a consumer, looking for a reliable source of online hotel reservation services, to ask a frequent traveler to name their preferred “Booking.com” provider.[2]

Expressed in the above manner, it is not surprising that the Supreme Court concluded that Booking.com is not generic. A consumer would not reasonably refer to an online hotel reservation service as “Booking.com”.

The USPTO has proposed an almost general rule that “when a generic term is combined with a generic top-level domain, such as “.com”, the resulting combination is generic. In other words, every “generic.com” term is generic“.[3] The Supreme Court rejected such an approach, noting that even the USPTO “his own past practice does not seem to reflect any such comprehensive rules” given that registrations issued for brands such as ART.COM and DATING.COM.[4]

Additionally, the Supreme Court found that a term “generic.com” conveys to consumers a characteristic of “source identification” – that is, it is associated with a particular website and only one entity can occupy a domain name at a time.[5] Further, registration of a “generic.com” mark would not impede competition, as use by a competitor would not be infringing unless it was likely to confuse consumers.[6] Booking.com NV has itself acknowledged that close variations are unlikely to infringe nor would it prevent others from using the word ‘booking’.[7]

Booking.com in Australia

Booking.com NV’s efforts to protect its marks in Australia were simpler and did not require a court visit.

IP Australia’s online records indicate that it first applied for registration of the RESERVATION.COM print mark in December 2011 which failed to register after several examination responses were filed. It is possible that in 2011 it was unable to establish sufficient brand awareness in Australia to overcome a distinctiveness objection.

In December 2015, she succeeded in obtaining the registration of the stylized marks and for hotel reservation and other related services after providing evidence under the repealed Article 41(5) of the Trade Marks Act 1995 (Cth). This meant that an objection was raised during examination on the grounds that the mark was not inherently distinctive but contained some level of distinctiveness (likely due to the stylization and colors claimed in the application). Booking.com BV succeeded in overcoming this objection with evidence of use to show that the mark had or will acquire distinctiveness through use.

Almost a year later, in November 2016, Booking.com BV obtained the registration of the capital letter RESERVATION.COM word mark under the provisions of repealed section 41(6). This meant that an objection had been raised during the examination on the grounds that RESERVATION.COM totally lacked distinctiveness, and Booking.com BV successfully demonstrated distinctiveness in fact, on the priority date of this application (which was November 24, 2014).

Rights granted in generic.com trademark registrations

Although trademark rights which have little distinctiveness are generally interpreted restrictively, REA Group Ltd has been successful in enforcing its trademark illustrating the value that a trademark registration can have.

In REA Group Ltd v Real Estate 1 Ltd [2013] FCA 559 (“REA Group“), the Federal Court decided that the use of the real estate1.com.au domain name on the website, in Google’s sponsored links section and as part of a URL infringes the REA Group’s trademark registration for . The Court concluded that “the “1”, which is not very distinct in the context of a domain name in ordinary block letters, may be missed by some consumers“[8] especially during the scanning process that is undertaken when reviewing search results.

It was also an important factor that “the main distinguishing feature of REA’s realestate.com.au trademarks is the idea that the term “realestate.com.auis both a brand name and a domain name. When Real Estate 1 used “realestate1.com.au” as a trading name, it picked up on this exact idea.”

However, the use of did not constitute infringement on the grounds that it contained sufficient distinctive features, illustrating the limitations that trademark holders might face with a generic.com trademark registration.

Key takeaways for brand owners

Owners who have adopted a generic.com Where generic.com.au should consider applying for trademark registration in Australia, as this provides an additional and enforceable avenue of protection. If it is very likely that a trade mark application for a generic.com domain name will encounter an objection during examination on the grounds that the mark is entirely devoid of distinctive character, such an objection could be avoided or overcome if:

(a) the applicant files substantial evidence of use to show that, at the date of filing, he had used the mark to such an extent as to indicate to the applicant the origin of those goods or services; and or

(b) the applicant registers the mark in combination with a distinctive logo at least until subsequent use is accrued.

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