Say you want to make a hotel reservation online. Where will you naturally go, following the internet’s flow? Probably, chances are good, it’ll be Booking.com. It’s a great domain name for a company that provides reservation services, after all. Obvious. Sensible.
However, the name is also utterly generic, according to the US Patent and Trademark Office (PTO). The PTO rejected Booking.com’s attempts to trademark its name, arguing that the common terms “booking” and “.com” don’t somehow add up to create a unique and protectable formulation.
But the company successfully challenged that decision in the lower courts. Last year, the Fourth Circuit Court of Appeals rejected the PTO’s arguments, and the government agency appealed the ruling.
Now the matter is in the hands of the Supreme Court justices. They must decide if adding a generic top-level domain, like .com, to an otherwise common term, like “booking,” can create a protectable trademark. On March 23, they’ll hear arguments in this case, which digital civil liberties advocates at the Electronic Frontier Foundation (EFF) say could change the web for the worse.
The group filed a “friend of the court” brief siding with the PTO on generic terms. Two wrongs don’t make a right, as it were, nor do two common words create an enforceable trademark when joined, the filing argues. The nonprofit alleges that allowing Booking.com to trademark its name will lead to chaos.
As it stands, EFF’s attorneys say, the company already enjoys many advantages simply by having claimed this covetable domain. If the reservations behemoth also starts policing every domain name that’s similar, it could crowd out every smaller booking business operating online with restrictive policing few could afford to challenge and unleash a tsunami of similar trademark litigation to the detriment of marketplace competition and consumers.
“As consumers, speakers, and business owners, Internet users depend on a balanced trademark regime that avoids internet exceptionalism but recognizes the practical realities of the domain name system,” EFF attorneys wrote.
From their perspective, the use of a “.com” domain name in the digital world is no more distinct than a company using the abbreviation “Co.” in the physical universe. “The .com suffix was designed to be a generic identifier of commercial entities online, and that is exactly what it is,” they explain.
In the 1980s, as the web began to flourish, the domain name system was created to keep track of the many new sites being created. Where previously sites were identified by their long numeric Internet Protocol addresses, the domain approach embraced the memorable—words. The words were technically translated back into numbers to connect people to these addresses. But for users’ purposes, the new system was simple.
At first, there were few identifiers—among them .com for businesses, .edu for universities, and .org for nonprofits. The first .com domain name—symbolics.com—was registered on March 15, 1985, to Symbolics, a computer manufacturer, and for 13 years thereafter, the .com domain remained restricted to commercial entities. EFF’s brief argues:
This period saw the explosion of online commerce that culminated in the so-called “dot-com boom” of the mid-1990s. As businesses raced to get online, they overwhelmingly selected the .com [formulation] for their domain names. As a result, consumers came to assume a .com domain by default for commercial entities, which further reinforced .com’s desirability and dominance.
Now, non-commercial entities can use .com too. Still, for businesses, having a different domain isn’t ideal as the .com suffix confers certain organic advantages. And it happens that every single company in the Fortune 500 has a .com domain. Allowing businesses to trademark names that simply combine a common word with .com is arguably akin to certifying the giants’ total domination.
Granting a linguistic monopoly
Take Booking.com, for example, which ranked 216 on the Fortune 500 last year. EFF points out that it might seek to exclude competitors from using booking.biz, booking.co, booking.inc, or booking.company as domain names.
It already claimed the .booking domain and could threaten competitors using second-level domains that include the generic term or a close variant, like ebooking. com, or bookings.com, or even booker.com.
Add to that trademark law’s “doctrine of foreign equivalents,” which extends protection beyond the English language, and Booking.com’s ”linguistic monopoly”—as EFF puts it—could stretch to the word “booking” in other tongues, too.
Domain names matter. They’re valuable in and of themselves, even putting trademark protections aside.
“Although many Internet users now rely on search engines to find and navigate to websites, the content of a domain name remains important to consumers,” the amicus brief explains. For example, Verisign, the registry operator for .com and .net, found in a 2015 analysis that “Internet search users are almost twice as likely to click on a domain name that includes at least one of the keywords in their search query.”
This amounts to a significant competitive advantage. A company with a trademarked Generic.com domain could exclude competitors from using the same common term for their goods and services. Thus an obvious search keyword for consumers wouldn’t turn up complete results. That will stifle competition and drive up prices for shoppers, according to EFF.
The consumer is king
Booking.com relies on consumers, of course, and so its high court brief is all about us. It begins with a statement that the “consumer is king” under the trademark statute.
However, the company quickly notes, “trademark protection turns on whether a mark permits consumers to distinguish one brand of products from another.” This is a factual determination. It depends on what actual consumers say and relies on surveys, like the one that lower courts credited when finding Booking.com had an enforceable trademark.
That survey showed 74.8% of relevant consumers consider Booking.com a brand, not a generic name. “That analysis should end this case,” the corporation’s lawyers write.
In their view, this particular brand has overcome the general barriers to generic terms in trademark law by showing its unique position of recognition. Just as “The Container Store,” a store that sells containers, can trademark its name with three generic terms, so too should Booking.com claim its regular-but-special formulation. “The PTO even registered Cooking.com—but the government now insists Booking.com is a bridge too far. This is nonsense,” the brief complains.
Booking.com says adopting the government’s position would decimate “countless PTO-registered Generic.com marks, which pervade every aspect of our lives.” Its brief asks the justices amusingly, “Seeking a date? Try Dating.com. Want to impress with concert tickets? Tickets.com or Concert.com can get them. Hoping for nice weather? Check Weather.com.”
Soon, the jurists will be questioning the company’s and PTO’s advocates. Whether their queries will amuse remains to be seen.
The Supreme Court is expected to issue its decision by term’s end in late June.