.CLUB registry: Online businesses to benefit from supreme court “Booking.com” ruling

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The .Club registry thinks that “online businesses using .CLUB and other domain name extensions to benefit from Supreme Court “Booking.com” ruling.”

Here is the complete press release from the .club registry:

(Fort Lauderdale, Florida. June 30, 2020) Today, in U.S. Patent and Trademark Office v. Booking.com, the Supreme Court of the United States has affirmed that generic terms including .com domain names may be trademarked when consumers do not perceive the mark to signify the class of services, with heightened distinctiveness and recognition attributable to top-level domains that add meaning like .club, .guru, and .vip.

Justice Ginsberg, writing for the court, explains: “[when] [c]onsumers […] do not perceive the term ‘Booking.com’ to signify online hotel-reservation services as a class[, …] a ‘generic.com’ term is not generic and can be eligible for federal trademark registration.” Thus, if a brand has enough goodwill and consumer recognition in the brand that the website creates a perception of the brand, rather than the class of goods, the website is trademarkable.

While Justice Breyer, the sole dissenter, disagrees with the court about whether .com can be appended to a generic term to create a trademarkable brand, he agrees with the court that website addresses using top-level domains which add meaning to the root term are trademarkable, explaining that “the principles discussed above may apply differently to the newly expanded universe of top-level domains, such as ‘.guru,’ ‘.club,’ or ‘.vip,’ which may ‘conve[y] information concerning a feature, quality, or characteristic’ of the website at issue.”

“We feel the court’s decision is very good news for any business using a strong domain name as their brand. Being able to obtain a trademark that includes their domain extension is a powerful statement and competitive advantage,” stated Colin Campbell, founder of the .CLUB registry. “We have always believed in the value of descriptive extensions such as .CLUB, that add context and meaning to a domain name, and the court’s ruling is a strong statement in support of such value.”

.CLUB believes that the court’s opinion affirms two distinct points.

  • Domains which add meaning will be analyzed alongside the second level domain for the purpose of making an otherwise generic domain non-generic. For instance, tennis.net will read “tennis.net” rather than just “tennis”. This gives enhanced trademark distinctiveness to top-level domains with meaning, such as “.guru, .club, or .vip”.
  • .COM domains are trademarkable with generic second level domains if the proprietor can show that consumers do not perceive the entire domain to represent a generic class of goods. This corresponds to the requirement that descriptive marks acquire secondary meaning in the minds of consumers.
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About Konstantinos Zournas

I studied Computer Engineering and Computer Science in London, UK and now live in Athens, Greece. I love domains and building websites. I am online since 1995, learned about HTML in 1996 and about domains in 2002. I started publishing the OnlineDomain.com blog in 2012.

4 comments

  1. “.COM domains are trademarkable with generic second level domains if the proprietor can show that consumers do not perceive the entire domain to represent a generic class of goods. This corresponds to the requirement that descriptive marks acquire secondary meaning in the minds of consumers”. – .CLUB

    In other words, or should I say, in Domaining parlance, Category Killers end up being the ones hurt by this awesome decision.

  2. One-word generics like Travel (loan, loans, etc) will now compete to get TM and value of others that can’t get TM first will go down big time whether with .com or any other extension. Two-Word names will go up in value such as http://GreatTravel.com, http://LondonTravel.com, etc A huge win for 2 word generic or brandable domains.

  3. “.com” is the most common and most recognized domain suffix. … org” stands for “organization.” Again, these domains can be registered by anyone regardless of their intended use. And to rank them it is advisable to use your niches’ keyword for an easy SEO.

  4. We can speculate on ‘what if’ all want 🙂 Anything can happen! They’ll be no rhyme or reason other than who’s judging the case.

    Since the foundation of the reasoning is flawed, it snowballs into CHAOS. Trademarking ‘generic terms’ (which can be subjective to begin with) was a HUGE mistake.

    The com’rs are cheering, “they’ll go after things like wwwbooking.com” (NOTE: theoretically! [booking.com already owns it]).

    But let’s look at namesilo’s upcoming catch.club…

    ‘What if’ they trademark that?

    Is catchclub.com in trouble? Maybe…

    Next thing you know, one could use the argument that adding www to the front is NO DIFFERENT than adding .com to the end!

    This case set it in stone. TM supersedes everything. It was an irrational, unneeded verdict and the results will reflect that. Courts will TEND to sympathize with TM owners!

    You LOST your grounding! At least before, technically, generic + .com was NOT trademarkable – you COULD HAVE argued that the TM unlawful. Not anymore.

    Whether you think it’s fair or not, as a ‘domainer’, means very little. FEW have compassion for you. Almost no one sees things your way – they have no idea. You’ll be the infringer, more often than not!

    The TM war is at their front door and they don’t even realize it – IMO. They’re fighting a battle where domainers LOSE. As soon as the court hears about WHAT YOU DO – YOU’RE TOAST.

    TM holders have ‘another inning against you’, outside of ICANN. Their umpires now. You’ll be fighting in their jurisdiction and everything…you have almost NO chance.

    All that said, I don’t think it’s cool at all…but they’re the ones jumping up and down in their chariots right now, ready for the games to begin!

    It might happen slowly. But when things get ugly…the happenings happen fast. Sharks are in the water – wait until they sense the easy prey.

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