Dec 16, 2020

"generic.com" Challenges to be Registered as Trademark

The purpose of trademark law is to prevent consumer confusion in a way that consumers can recognize the true source of particular goods or services. What the trademark laws do is stopping, for example, a competing business sells the same products using the same name.

As digital and internet-based platforms become a more popular way of doing business, many entrepreneurs are attending to how they distinguish their products or services on the internet. A domain name is often used in a commercial perspective, as a way of identifying and differentiating one business services from that of another on the internet. Domain names are user friendly and easy to remember addresses that internet surfers use to locate any website.

Many company owners use their company name or other descriptive or distinctive words to create their domain name. Since domain names are used in most cases as differentiating goods or services, it is wise to trademark a domain name in order to protect the business from theft of your customers and brand identity.

Therefore, the similarity between Trademark and domain name could be summarized as both are used for identifying the products or services to the consumers, however, Trademark is for the product of the company and the domain name is for the company on the internet and the virtual image of the business.

Both trademark and domain name needs to be registered; Trademark protects the brand name while unauthorized use of a domain is protected by the registered domain name. Trademark supports the face value of the brand while the domain name helps to increase in the access value.

A question raised here whether we could register a domain name as a trademark. it makes sense in most cases to register a company's business name or trademark as a trademark, particularly if the business is going to be conducted online or across multiple states.

In many countries domain names also could be registered as trademarks. However, for registering the domain name as a trademark the domain name should be unique and be distinguished from the other company goods and services over the internet.

The domain name should be unambiguous and different from all the well-known name on the internet so that the same is not misleading, confusing and also should not be against morality or public order. If the domain name is found to be similar, deceptive, and not unique then such will be an infringement of the domain name trademark.

Hence, any domain name which is unique, capable of identifying itself and distinguishing its goods and services from those of others, and acts as a reliable source identifier of concerned goods and services on the internet, might be registered as a trademark. However, there is a problem registering a generic name like “home.com” as a trademark and the owner of such domain name would face an uphill battle to register a domain name that you use solely as an address and not a signifier of services.

A recent United States Supreme Court (U.S Supreme Court) case sheds light on what type of boundaries may preclude a domain name from being registered as a trademark. Particularly, how is generic determined in the context of a domain name seeking registration as a trademark? In the United States Patent and Trademark Office et al v Booking.com, the U.S Supreme Court held that Booking.com is not a generic name, and is not allowed to be registered as a trademark.

In a recent case, a domain name having generic words, after many challenges for its registering as a trademark, finally registered as a trademark. This case is essential in the view that it sheds light on types of boundaries that may preclude a domain name from being registered as a trademark. In the USPTO vs. Booking .com, the US supreme court finally held that booing.com is not a generic name and is registerable as a trademark.

Booking.com as a Trademark

Booking.com is an online popular travel agency for accommodating reservations. It is owned and operated by and is the primary revenue source of United States-based Booking Holdings and is headquartered in Amsterdam. The website is available in 43 languages and has over 28 million listings.

Booking.com tried to get the term "Booking.com" registered as a trademark but this application was rejected by the USPTO in 2016 as they believed the trademark sought was rather generic in nature and hence could not be registered. Booking.com challenged this decision in the U.S. District Court for the Eastern District of Virginia.

 

Generic nature of "booking.com"

The USPTO had held that Booking.com was not allowed to be registered as a trademark for travel-related services. Not too surprisingly, it took the view that the word "booking" is totally descriptive of, and therefore unable to be registered for travel-related services and that the addition of the suffix".com" adds no distinctiveness at all. This decision was overruled by the courts, and the issue finally ended up at the Supreme Court.

After challenging the decision by booking.com, the supreme court finally ruled that the company had shown its name was not generic. This final decision was based on Booking.com’s extensive nationwide advertising campaign, as well as evidence of surveys; “robust consumer sales, and large spontaneous media coverage.

The court stated that the evidence was more than sufficient to demonstrate that Whether Booking.com is generic turns on whether that term, taken as a whole, signifies to consumers the class of online hotel reservation services.  Moreover, the court concluded that the term “booking.com” is to identify the source of the product rather than the product itself. If the booking.com was generic, there is an expectation that consumers understand the other same traveling website (such as Travelocity) to be a “booking.com”. As the judge quoted “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”.

 

Generic.com is yet not eligible but Consumers’ perceptions make the difference

The ruling does not allow, however, all combinations of a generic name and “.com” to be trademark-eligible, source-identifying term. Eligibility of the combination of a genic word and “.com” depends on consumer’s opinion: how they perceive the mark. As the Court stated, 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.

 

Registering Domain name as trademark in Iran

So, how might this have played out in Iran? Iran's trademark law recognizes the concept of fair use. There is no specific reference to trademarking a domain name having generic names. The use of trademarks in the form of "Internet domain name" is not prohibited but unfair use of such trademark has been prevented and the violator will be sentenced to the punishment provided in this law (Article 76) if it causes deception and suspicion of the authenticity of the goods and services. 

Therefore, any use of the trademark in the form of a domain name is not prohibited, and the scope of the trademark owner's exclusive rights within the goods and services must be considered. For example, if a person registers the domain of "Teslairan.ir" and posts news and analysis related to the car on the relevant website, his action is allowed because in this case, there is no deception or mistake. However, it must be used in a category other than the vehicle industry. 

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