Trademark

Generic Domain Names as Trademarks: Registrability and Enforcement


We’re pleased to bring to you an insightful post by Raunaq Kamath on the discrepancy in registration and the subsequent enforcement of generic words as domain names and trademarks. Raunaq is an attorney at Ira Law.

Generic Domain Names as Trademarks: Registrability and Enforcement

Raunaq Kamath

Domain names are a commodity, and a valuable one at that. For instance, cars.com is said to have been valued at a whopping USD 872 million. According to GoDaddy, the 5 most expensive domain names publicly reported are:
1. CarInsurance.com: USD 49.7 million
2. Insurance.com: USD 35.6 million
3. VacationRentals.com: USD 35 million
4. PrivateJet.com: USD 30.18 million
5. Voice.com: USD 30 million

Coming in at number 6 is internet.com which fetched a relatively modest USD 18 million. What is striking about these domain names, and the next twenty or so on the list, is that if one were to ignore the accompanying generic Top Level Domain (gTLD) i.e. ‘.com’, all that remains is generic words.

Internet.in domain name registration in India

The registrability of generic words as domain names in the Indian context was examined by an Arbitrator in an INDRP proceeding in 2006. The domain name in question was internet.in. The complainant was the registered proprietor of the trade mark INTERNET in class 34 and claimed that the registrant was known to capture and park thousands of ‘famous trade marks’. The arbitrator found that the domain name internet.in and the trade mark INTERNET are identical and eventually held that the registrant should not be permitted to retain this domain name. The arbitrator, however, also concluded that the complainant had failed to prove its rights in the generic word INTERNET and ordered that the domain name be taken into the custody of the .IN Registry.

In two stages of appeal, the Delhi High Court (a Single Judge followed by a Division Bench) did not substantially interfere with the order, save to find that the arbitrator did not have powers to direct the .IN Registry to take custody of the domain name, which should be struck off (see Shamnad’s post on the Single Judge’s order here). The High Court also found that the arbitrator’s conclusion that the complainant had failed to prove its own rights was an incorrect one, owing to the subsistence of a valid and unchallenged registration for the trade mark INTERNET in his favor. The domain name internet.in was eventually not transferred to the complainant as the Court was of the view that he was unable to demonstrate any actual use of the trademark INTERNET. The Court also observed that the word ‘internet’ is generic and the complainant’s trademark INTERNET is therefore a weak one which are relevant considerations to decline the request for a transfer of this domain name.

The internet.in decision tells us that while generic words have been trademarked in India, a generic word as a domain name is susceptible to cancellation, unless one can demonstrate acquired distinctiveness through use, goodwill and reputation.

Booking.com domain name registration in US

The US Supreme Court has taken this issue one step further and is examining the trade mark registrability of a domain name comprising a generic word accompanied by a gTLD, in the case of United States Patent and Trademark Office v. Booking.com. The registrant of the domain Booking.com had filed applications seeking registration of the trade mark BOOKING.COM.

The USPTO refused registration of the marks finding that BOOKING.COM is generic and, in the absence of acquired distinctiveness demonstrating a secondary meaning, the addition of a gTLD is inadequate to make a generic word i.e. booking, distinctive enough for a registration. The appellate board did not interfere with the decision.

The District Court, in appeal, however reversed these findings and opined that a secondary meaning had been acquired and the marks were therefore registrable. The USPTO was unsuccessful in an appeal to the Fourth Circuit which concurred with the District Court’s decision and the issue is now before the US Supreme Court.

The US Supreme Court was scheduled to hear oral arguments on March 16 which now stands deferred for obvious reasons. It remains to be seen whether the Court will find that the addition of a generic TLD to a generic word could potentially constitute a registrable mark and if so, in what circumstances.

Liberal registration of generic domain name as trademarks in India

The Indian Trade Marks Registry on the other hand has demonstrated limited reservations in granting registration to such marks. For one, BOOKING.COM is a registered trade mark (2298594) in India. Moreover, other marks such as INTERNET.COM (1236843), GO.COM (1236410), AA.COM (1789454), LISTEN.COM (888264), MATCH.COM (1269727), ERASER.COM (1994835), as well as more indigenous marks such as KERALA.COM (1605615), NAAM.COM (1381238), and PYAR.COM (1381239) have been granted registration. Another significant example of a liberal registration in India is the one granted for the mark .COM (1831706) itself.

In this backdrop, it emerges that the Indian Trade Marks Registry is open to grant registration to generic domain names as trade marks. However, the enforceability of these registrations is another story altogether.

The Delhi High Court was approached on 2 separate occasions by the owner of bookmyshow.com who, despite having acquired statutory rights in the trade mark BOOKMYSHOW, was unable to obtain orders restraining third parties from using bookmysport.com (see the decision here and a post on it on the blog here) and bookmyevent.com (see here). The Court was of the view that the overlapping prefix ‘BOOKMY’ was descriptive and commonly used by various players in the booking industry and therefore deemed it appropriate to deny the injunction.

Similarly, the Bombay High Court also denied injunctions sought by shaadi.com and indiaproperties.com against secondshaadi.com (see here for the decision and here for our post on it) and indiaproperty.com (see here) respectively, finding that the generic and descriptive nature of the Plaintiffs’ respective domain names meant that the slightest difference in the Defendants’ corresponding domain names was sufficient to deny an injunction.

The question remains that if the US Supreme Court does find that the trade mark BOOKING.COM is registrable, will a registration of this nature be enforceable going forward?

4 comments.

  1. AvatarVishal R.

    But are the “bookmy” decisions correct in the author’s opinion? Aren’t they distinctive marks by now?

    Reply
    1. AvatarRaunaq Kamath

      I do confess that, at first blush, I personally associate ‘bookmy’ with http://www.bookmyshow.com. That said I do not disagree with the decisions given that 1) the threshold for demonstrating acquired distinctiveness of an otherwise generic/ descriptive mark is high and could potentially require a trial 2) there was material placed on record by the defendants to prima facie demonstrate the existence of third party prior users of the ‘bookmy’ mark. As such the denial of an interim injunction on account of these cumulative facts ought not be faulted in my view.

      Reply
  2. AvatarNiranjan R

    Interesting case in this 2020 Lockdown. Finally, Booking dot com wons the brand name case. Also, I could see many generic .in domain names are already registered in India.

    Reply

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