The commercial desire to adopt a generic.com trade mark is unsurprising – such domain names are easy for consumers to recall and readily informs the consumer what goods or services they are offering. As a consequence, generic.com domain names have previously be bought and sold for very large sums. The top 5 most expensive domain names which have been publicly reported are said to have sold for the following sums:1
- CarInsurance.com — $49.7 million
- Insurance.com — $35.6 million
- VacationRentals.com — $35 million
- PrivateJet.com — $30.18 million
- Voice.com — $30 million
Registration of a domain name per se provides no exclusive rights to prevent others from using a similar domain name or trade mark. Thus, achieving trade mark registration for such domain names can provide further value for brand owners. However, there is significant difficulty in securing trade mark registration for such trade marks.
Online accommodation booking agency Booking.com N.V. faced such difficulty in the United States, where it has been over a decade since it first applied to register a Booking.com containing trade mark in the US.
However, in a positive move towards achieving registration, the Supreme Court of the United States decided in June 2020 that the domain name Booking.com is not generic, placing the online accommodation booking agency one step closer to securing trade mark registration for Booking.com in the United States.
This decision is no doubt welcomed by those businesses who utilise a generic.com domain name as part of its branding. However, consistent with the Australian position, substantial evidence of use will still be required to achieve registration of the domain as a trade mark.
Booking.com is not generic
Deciding that Booking.com is not generic was crucial to Booking.com N.V.'s ability to secure trade mark registration. Under US trade mark law, generic trade marks do not qualify for Federal trade mark registration, irrespective of the extent to which that mark has been used. This is unlike marks that are descriptive, which can achieve registration if the applicant can demonstrate a secondary meaning.
In determining whether a mark is generic, the US Supreme Court usefully summarised the nature of the enquiry as follows:
"whether "Booking.com" is generic turns on whether that term, taken as a whole, signifies 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—to be a "Booking.com." We might similarly expect that a consumer, searching for a trusted source of online hotel-reservation services, could ask a frequent traveler to name her favorite "Booking.com" provider."2
Expressed in the above way, 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 a "Booking.com".
The USPTO put forward an almost blanket rule that "when a generic term is combined with a generic top-level domain, like ".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's "own past practice appears to reflect no such comprehensive rule" given that registrations issued for marks such as ART.COM and DATING.COM.4
Moreover, the Supreme Court found that a "generic.com" term conveys to consumers a "source-identifying" characteristic – i.e. it is associated with a particular website and only one entity can occupy a domain name at any time.5 Additionally, registration of a "generic.com" trade mark would not hinder competition, as a competitor's use would not infringe unless it is likely to confuse consumers.6 Booking.com N.V. itself acknowledged that close variations are unlikely to infringe and norwould it prevent other from using the word "booking".7
Booking.com in Australia
Booking.com N.V.'s efforts to protect its trade marks in Australia have been more straightforward and did not require a visit to the Courts.
IP Australia's online records indicate that it first applied to register the BOOKING.COM block letter mark in December 2011 which did not mature to registration after several examination responses were filed. It is possible that as at 2011, it was unable to establish a sufficient reputation in the mark in Australia to overcome a distinctiveness objection.
In December 2015, it was successful in securing registration for
the stylised marks 
and 
for hotel reservation and other related
services after providing evidence under repealed section 41(5) of
the Trade Marks Act 1995 (Cth). This meant that an
objection was raised at examination on the basis that the mark was
not inherently distinctive but contained some level of
distinctiveness (likely owing to the stylisation and colours
claimed in the application). Booking.com B.V. successfully overcame
that 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 B.V. secured registration for the block letter BOOKING.COM word mark under the provisions of repealed section 41(6). This meant that an objection was raised during examination on the basis that BOOKING.COM totally lacked distinctiveness, and Booking.com B.V. successfully showed distinctiveness in fact, at the priority date of that application (which was 24 November 2014).
Rights afforded in generic.com trade mark registrations
Although rights in trade marks that have a low level of
distinctiveness are generally narrowly construed, REA Group Ltd has
had some success in enforcing its trade mark 
, illustrating the value that a trade mark
registration can have.
In REA Group Ltd v Real Estate 1 Ltd [2013] FCA 559
("REA Group") the Federal Court decided that use
of the realestate1.com.au domain name on
the website, in the heading of sponsored links in Google, and as
part of a URL infringed REA Group's trade mark registration for
. The Court found that
"the "1", which is not very distinct in the
context of a domain name in ordinary type face, is likely to be
missed by some consumers"8 particularly during the scanning
process that is undertaken when reviewing search results.
It was also an important factor that "the central distinguishing features of REA's realestate.com.au trade marks is the idea that the term "realestate.com.au" is both a brand name and a domain name at the same time. When Real Estate 1 used "realestate1.com.au" as a trading name, it took up that precise idea."
However, use of 
did not amount to
infringement on the basis that it contained sufficient
distinguishing features, which illustrates the limitations that
trade mark owners could face with a generic.com trade mark
registration.
Key take aways for brand owners
Owners that have adopted a generic.com or generic.com.au trade mark should consider seeking trade mark registration in Australia as this provides an additional and enforceable avenue for protection. While it is very likely that a trade mark application for a generic.com domain name will encounter an objection at examination on the basis that the mark is totally lacking in distinctiveness, such an objection could be avoided or overcome if:
(a) the Applicant files substantial evidence of use to demonstrate that, at the filing date, it had used the mark to such an extent that it indicates the Applicant as the origin of those goods or services; and/or
(b) the Applicant files the mark in combination with a distinctive logo at least until further use is accumulated.
Footnotes
1. https://www.teapotdigital.com.au/most-expensive-domain-names.html
2. page 7 of UNITED STATES PATENT AND TRADEMARK OFFICE ET AL. v. BOOKING.COM B. V..
3. page 8 – UNITED STATES PATENT AND TRADEMARK OFFICE ET AL. v. BOOKING.COM B. V.
4. ART.COM is registered on the Principal Register. While DATING.COM is on the Supplemental Register a mark that is generic is unable to be registered on the Supplemental register.
5. page 9 – UNITED STATES PATENT AND TRADEMARK OFFICE ET AL. v. BOOKING.COM B. V.
6. page 12 – UNITED STATES PATENT AND TRADEMARK OFFICE ET AL. v. BOOKING.COM B. V.
7. page 13 – UNITED STATES PATENT AND TRADEMARK OFFICE ET AL. v. BOOKING.COM B. V.
8. paragraph 241 of REA Group Ltd v Real Estate 1 Ltd [2013] FCA 559
Originally published 19 February 2021
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
