In an 8-to-1 ruling, The U.S. Supreme Court has decided that Booking.com, the online travel reservation site, can get a trademark for its domain name. The lesson here is simple: because Booking.com is not generic to the public, it is not generic. No doubt, this decision opens the door for other brands with "generic" names to apply for a trademark, but what does that mean to your business?
Let's look at Ruth Bader Ginsburg's comments she delivered as the opinion of the Court.
If you thought domains don't matter - think again
In the Booking.com case, the U.S. Patent and Trademark Office (USPTO) was urging the High Court to reverse a judgment of the U.S. Court of Appeals for the Fourth Circuit that held Booking.com to be a registrable trademark. Booking.com argued that “under the Lanham Act, the consumer is king,” and the fact that survey evidence has proven 74.8% of relevant consumers to consider Booking.com a brand, rather than a generic name, “should end this case.” So if before it was up for debate does your domain name matter or not, now it is clear that The U.S. Supreme Court decision will change the perception of many businesses about domains and their value.
“The owners of short, generic domain names enjoy all the advantages of doing business under a generic name.”
Generally, a generic trademark is not protectable. You can't trademark the word Dictionary because it is a generic term, but when you match the word Dictionary with “.com,” your future and existing customers, business partners, and investors will recognize you as a brand.
"Generic domains are also easier for consumers to find. A consumer who wants to buy wine online may perform a keyword search and be directed to “wine.com.” Multiple brick-and-mortar companies could style themselves “The Wine Company,” but there can be only one “Wine.com.”
People still type their search terms into their browsers, and most of them will type their search with a .com. A unique and memorable domain that also tells people what the website is about is a valuable piece of online real estate.
"Owners of generic domain names enjoy additional competitive advantages unique to the internet—again, regardless of trademark protection. Most importantly, domain
name ownership confers automatic exclusivity."
A domain name can function as a trademark, which is a term or symbol used to create an exclusive association in the marketplace between a company and the goods or services it sells. It can help in protecting your brand image and continuously strengthen it, not to mention that exclusive rights over that name can bring justice to your brand.
"I fear that today’s decision will lead to a proliferation of “generic.com” marks, granting their owners a monopoly over a zone of useful, easy-to-remember domains."
Using a high-value domain for your website and your company’s email address helps establish authority, credibility, and professionalism, both online and offline. When you own a generic ".com" term, it gives you an edge over your competitors, and with the end of the Booking.com case, there is no doubt that we can expect a real battle between brands on the market. Is your business ready for it? How will you fight for a monopoly in your space?
“Because domain names are one of a kind, a significant portion of the public will always understand a generic ‘.com’ term to refer to a specific business."
A domain great name has the power to build a long-lasting relationship between a company and its customers, but when you sum up everything your company is about using only your domain name as a reference - it will possibly convey a variety of emotional appeals while giving you enough the possibility to establishing your company as a leader in your industry.
"Granting trademark protection to “generic.com” marks confers additional competitive benefits on their owners by allowing them to exclude others from using similar domain names."
The Supreme Court noted the USPTO’s concern that allowing a generic .com to be trademarked could hinder competitors by preventing them from using the word “booking” or adopting domain names like “Bookings.com,” “eBooking.com,” “Booker.com,” or “Bookit.com.” That means (after Booking.com got a trademark registration), if someone else is using a similar domain name, Booking.com could "threaten trademark lawsuits against them.
A “generic.com” term might also convey to consumers a source-identifying characteristic: an association with a particular website.
“While we reject the rule proffered by the PTO that “generic.com” terms are generic names, we do not embrace a rule automatically classifying such terms as nongeneric. Whether any given “generic.com” term is generic, we hold, depends on whether consumers, in fact, perceive that term as the name of a class or, instead, as a term capable of distinguishing among members of the class.”
The full decision (along with quotes from Ruth Bader Ginsburg) is here.