So while premium .com owners seem to be championing the Booking.com decision. Others are now looking at how pairing the name and extension can create added value within an ip portfolio.
Jeff Sass sent me an email about how .club is looking at things. They also put out a press release.
Online Businesses Using .CLUB and other Domain Name Extensions to Benefit from Supreme Court “Booking.com” Ruling
Both ruling and dissent opinion give credence to the value of website addresses using descriptive domain extensions
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.
Campbell is available for further comment on the ruling and its impact on the domain name industry.
About .Club Domains, LLC
Founded by Internet entrepreneur Colin Campbell, whose prior successes include Tucows Interactive and Hostopia.com, .Club Domains, LLC was formed for the purpose of becoming the .CLUB gTLD registry. With more than 1.4 million domain names sold to date .CLUB leads the pack of new domain extensions in premium sales and usage. More information and links to register .CLUB domains are available now at www.get.club.
CONTACT: Jeff Sass, Jeff@get.club. (970) 367-7277
Ridiculous press release. .club won’t see any benefit from this, Would have been nothing to stop a trademark registration of example.club previously.
Jeff and Colin are good guys and unfortunate that they came out with such a terrible press release. This decision is all about generic terms and .com and shows they are just trying to get some attention when the world is talking about domain names which happens once every 5 years
Naeem Ahmed Rana says
IT MEANS THAT ANY DOMAIN NAME (GENERIC OR OTHERS) IS A SEPARATE ENTITY AND BUSINESS; & IT CAN BE TRADE MARKED. VERY GOOD NEWS
That is not what it means.
I think it’s to help them go after all the booking.ngtld.
They’ll try arguing it’s confusingly similar. They see how this could be a ‘problem’, especially in SERPS. I can prove it’s really .COM that has the problem – these NEW EMD rank easy. I only say so because .com’r will lie and tell you otherwise. They like you to think nTLD is a hindrance.
Not surprised .com domainers cheer on the capitalist oligarchy. Blind faith going to take you into the darkness. It only gets uglier as time goes on. 20 years from now, you might look back and realize it.
There was *NO PROBLEM* here. They owned the .com! What, was competition promoting BOOKING.COM on billboards – infringing? No. 100% there are other motives.
And what you have now, IS a problem.
Shame domaining cheers, in all their hate and lack of foresight/critical thinking.
Enjoy jumping though your new hoops. Don’t slip into the fire.
They don’t care about new tlds. Search for “booking” and there is no new tld sites showing up anywhere to be seen.
Jeffrey Sass says
Clearly, there are differences in opinions, here and in other posts. Nothing wrong with that. We feel that the ruling is favorable for businesses that use their domain name as their brand, regardless of the extension. We also feel the comments in Justice Breyer’s dissent were consistent with our view that an extension can add meaning and relevance to the word(s) to the left of the dot, and that can add value to the domain. It’s not every day that SCOTUS rules on issues in our industry. Stay safe and healthy, everyone.
What do you think are the best TLDs? I have a domain name search website and I’m considering adding more TLDs to search.