Recently, the United States Supreme Court (SCOTUS), in the Booking.com decision held that a generic .com domain name can obtain a trademark registration under certain conditions. With SCOTUS granting limited protection to generic .com domain names, an interesting question arises as to what will happen when there is a trademark dispute between a .com domain name and a .in domain name and if it is now possible for a trademarked generic .com name to block the registration of a generic .in domain name. This post explores these questions.
This case concerned an application to register the trademark ‘Booking.com’. The registration was rejected by the United States Patent and Trademark Office (USPTO). USPTO held that the term ‘booking’ was generic for the services the applicant sought registration for and the addition of a ‘.com’ did not create a protectable mark.
The applicant sought a review of the USPTO’s decision in the District Court of Virginia (DC). The DC held that ‘Booking.com’ was non-generic and potentially protectable as a trademark. The Fourth Circuit Court affirmed the DC’s decision. On appeal, the case went to SCOTUS, which pronounced an 8-1 decision in favor of Booking.com for limited trademark protection.
The evidence (pg. 37) submitted by Booking.com to the DC showed that 74% of consumers recognized ‘Booking.com’ as a brand name. The Court observed that although the word ‘booking’ is an unprotectable generic term, its combination with ‘.com’ giving rise to ‘Booking.com’ did transform it into a descriptive term that could be protected once it had acquired secondary meaning.
Affirming the same, SCOTUS also noted that the existence of a ‘Booking.com’ trademark does not restrict the registration of similar generic marks like ‘carbooking.com’ or ‘flightbooking.com’ (at pg. 59 in the judgment). The issue of overbreadth of the mark was addressed by holding that in any future case, to enforce their mark in an infringement suit, Booking.com would have to prove that there is a ‘likelihood of confusion’. The Court added, “given that domain names are unique by nature and that the public may understand a domain name as indicating a single site, it may be more difficult for domain name plaintiffs to demonstrate a likelihood of confusion.”
The case brings to the forefront the need to balance two fundamental principles of trademark law. First, the need to avoid a likelihood of confusion in the minds of consumers and second, to avoid trademark protection to generic names and terms in order to protect competition in the marketplace. As an exception trademark protection can, however, be offered to terms that are ‘descriptive’ when consumers associate the descriptive term with a single product.
On similar facts, in Bigtree Entertainment Pvt Ltd v. D Sharma (Bookmyshow case), where the plaintiff tried to enforce their trademark claim over the domain name ‘bookmyshow.com’ and the prefix ‘Bookmy’, the Delhi High Court noted that the prefix ‘Bookmy’ was not an invented word and that it was an apt description of the business the plaintiff was involved in (i.e., booking tickets for events). Section 9(1) of the Trade Marks Act, 1999 prohibits registration of marks “which serve in trade to designate the kind, quality, quantity, intended purpose…of the goods or services”. Given that ‘Bookmy’ was a common general term descriptive of the services which are sought to be provided, it could not be accorded trademark protection. The judge in the case also noted that the facts as to whether the prefix ‘Bookmy’ had acquired a secondary meaning and distinctiveness could only be established based on evidence.
Unique Domain Names and the Likelihood of Confusion
What is interesting to note from the Booking.com case is the observation that domain names indicate a single site. Booking.com, then, uniquely refers to a particular hotel booking organization’s domain name. What made a generic term like ‘booking’ qualify for trademark protection was the attachment of ‘.com’, a Generic top-level domain (gTLD).
Apart from gTLDs, there are also Country Code top-level domains (ccTLD) Test top-level domains (tTLD), Sponsored top-level domains (sTLD), and also other levels of domains which are commonly used as suffixes for domain name registrations. ccTLD’s such as ‘.in’ (India), ‘.au’ (Australia), ‘.uk’ (United Kingdom) etc., are generally reserved for particular countries to use and are used fairly extensively.
Given the existence of other levels of domain names, an interesting question arises as to the trademark protection available for domain names beyond one level of domain registration. For instance, if the trademark protection accorded to ‘Booking.com’ extends to ‘Booking.in’ too. Interestingly, even though there is no site under the name ‘Booking.in’, web searches for the same automatically go to ‘Booking.com’. However, leaving behind the mysteries of how the internet works and looking at trademark law, it is fairly intuitive that protection offered to ‘Booking.com’ would not automatically extend to a ‘Booking.in’ mark even if they refer to the same site on the internet. Trademark law looks at the arrangement of the mark and not the product. The USPTO argued that allowing trademark protection to domain names increases anticompetitive possibilities because trademark over a ‘generic.com’ completely monopolizes the use of that domain name.
This argument is particularly interesting for the Indian context, as the Trade Marks Registry has been quite liberal in granting trademark registration to generic domain names. However, as noted in this post, the enforcement of these trademarks has not been particularly successful. The question that arises is if the grant of trademark registration to a ‘generic.com’ can preclude the registration of a ‘generic.in’ mark.
With respect to domain name registration itself, an almost universally accepted policy for dispute resolution with respect to domain names is the Uniform Domain Name Dispute Resolution Policy (UDRP). Disputes concerning India’s ccTLD (the ‘.in’ suffix) are governed by the INDRP (.in Domain Name Dispute Resolution Policy). The procedure under UDRP and INDRP requires that any dispute between a trademark holder and a domain name holder be directed to arbitration. In disputes involving a gTLD and ccTLD, a ccTLD that has adopted the UDRP is consolidated with a gTLD list and other ccTLD domain names are consolidated against a single registrant in order to be able to file a single UDRP complaint. INDRP and UDRP’s dispute resolution policies are similar, and the INDRP reads that a complaint can be brought to it if –
- the domain name is identical or confusingly similar to the trademark at issue;
- the registrant has no rights or legitimate interests in the domain name;
- the domain name has been registered and/or is being used in bad faith.
A party with a trademarked domain name with a gTLD registration that has a dispute against a .in domain (ccTLD) will have to take up the issue under the INDRP and will be subject to arbitration under a single arbitrator. Given the shaky precedent with respect to enforcing domain name trademarks and the fact that most disputes till date have been concerning the use of recognized and registered marks in a domain name by an entity that has no rights over the mark (for instance, parties using ‘Dell’, ‘HUL’ marks in bad faith) it remains to be seen how a dispute between a gTLD and ccTLD will be addressed. However, given that a search for a ‘generic.in’ automatically leads to a domain registered as a ‘generic.com’, it perhaps shows that the existence of, and domain registration and trademark in a ‘generic.com’ automatically prevents some other party from using a ‘generic.in’ domain registration. Unless the ‘generic.in’ is a country-specific website of the ‘generic.com’, like amazon.com’s India specific website is amazon.in.
Given that trademark law protects the arrangement of words in a particular mark, it can be said that protection accorded to a ‘generic.com’ does not block the trademark registration of a ‘generic.in’, however, given that domain names uniquely identify single sites, there cannot be an overlap in the domain names that use different suffixes. So, a ‘generic.com’ entirely monopolizes the combination of the term ‘generic’ with any domain suffix, however, the trademark recognition of the same comes from consumer perception and acquired distinctiveness, which is to be proved on a case-to-case basis.
Image from here