While some are championing and raising prices on their one word .com domain names. John Berryhill has a completely different take. Of course this is one man’s opinion, but John does have an expert background in defending domain names in legal disputes.
In a series of posts at Namepros John has commented that,
“The UDRP rules will never be amended in a manner that is favorable to domain registrants, for reasons too complicated to quickly describe. To put it briefly, in the relevant ICANN working group discussing the subject, domainer interests are outnumbered by around 80 to 1. And this will NEVER happen”
He went on to reply to others and wowed the crowd with the point that owning Drink.com could become useless and worthless if someone gets a TM on Drinks.com.
Namepros member Keith replied: @Kate Buckley is celebrating this and she’s not alone amongst “industry experts “. Just proves that we all have lots to learn…
Here is the full post on Drink.com:
Priority is an important principle in trademark law, and trademark rights are not retroactive.
But so what.
From the perspective of domainers, it doesn’t matter.
if you have drink.com and are looking to sell it, and someone later obtains a trademark right in “drinks.com” for a site related to drinks, you’re screwed.
Your domain is now worthless. You can’t develop it for drinks, and you sure as hell can’t sell it to anyone else who wants to use it for drinks. Your buyer doesn’t benefit from your priority because you cannot convey any goodwill in a “for sale” page to someone who wants to use the name for its dictionary meaning.
Yeah, sure, you can keep your domain name, but you can’t use it or sell it. No one will buy it from you.
So, this notion of “it makes generic names more valuable” completely IGNORES the fact that each generic domain which becomes a trademark renders several others to be completely worthless.
The ICA isn’t going to tell you what happens to the value of your bicycle.com or bicycler.com, when someone comes along and obtains a trademark for bicycles.com.
They become worthless and unsellable.
This decision provides the basis to render countless domain names to be worthless junk.
Read all the comments here.
Jess Coller an ip attorney for 30 years gave his opinion on what the ruling means. He focused on how small/mid sized businesses should feel. .
Now it’s on, will all the .com is everything crowd come after John? He is smarter than 99% of the industry so this should be fun. Thank you for posting this.
Not sure I follow, what does his post have to do with people who like or don’t like .com? Many people are sceptical of what this decision means for domain values.
I think he means the crowd that are cumming or should that be comming in their pants about this. Raising prices and talking about filing TM’s. I could be wrong.
There is no ability for domainers to get trademarks on random domains.
Yes there are a lot of layers here Paul. I agree someone just can’t get a random name tm’d. Booking.com spent millions to brand that name.
I think John’s other comments are interesting like Drink.com being worthless and what the ICA is not telling people?
That’s absurd. A LOT of domainers that have the knowledge and skills, to build the most basic site sufficient enough to show use in commerce, to qualify for a TM. It’s not that difficult to get a trademark.
That is not how it works Brad, you can’t just put up some site and expect to get a trademark. The bar is being set very high and domainers applying are going to be wasting their application fees. The requirement here is not simply “use in commerce”, if the site isn’t widely known the application won’t go anywhere.
“Because “Booking.com” is not a generic name to consumers, it is not generic.”
“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 dis- tinguishing among members of the class.6”
If Drink.com files a trademark application, and I own Drinks.com and put up a drinks site, may I then use my Drinks.com site to dispute the application when it is published for opposition? Does the knife swing both ways?
Good point you would want to file when the published for opposition time comes.
Not to mention there is now value in a service to watch for such TM apps, and then notify “adjacent” domain holders. For a fee they EACH pay to make an opposition claim.
Was not clear:
The idea is not to extort fees, but to turn key a flood of oppositions that the total application fees might not be what the applicant thought they would be. 🙂
I don’t agree. Typically a “Drinking, Inc” will not trademark “drinking.com” unless it already acquired the domain name. It’s just too risky to name a company or even trademark or promote it without having the name already in possession.
in the example, drink.com could still have value if used for something not related to drinks. could be a video game or media site for example. trademark has to cover one or more specific uses or categories.
The point is that when lawyer sees a very similar trademark they have a duty to alert their client that it is a potential legal risk. A lot of names potentially will not pass trademark clearances in the future.
This is going to be a real flow on effect. A big company is not going to buy bookings.com or ibooking.com for example when they can buy something else and avoid that legal risk.
trademarking “drinking” does not entitle you to drinking . com Go Register Dinking . Horse you Jackass!
This is one more small step for the courts to leverage whatever they want from you to give to someone else. It’s called socialism (HINT: It benefits a big club and you ain’t in it).
Internet being attacked on all fronts. Listen, these are quotes from senator Graham.
“Facebook is talking about end-to-end encryption which means they go blind”
“We’re not going to go blind and let this abuse go forward in the name of any other freedom”
“This time next year, if we haven’t found a way that you can live with, we will impose our will on you.”
Congratulations domaining, on your loss of legal grounding to compete with GENERIC words. You lost freedoms. But since you figure you’ll make MORE money, it’s cool. Good for you.
What now? Do you realize how huge the implications are? Perhaps soon you won’t be able to bid on some Google keywords, such as ”booking”? All they have to do is threaten to sue you, and they have a pretty good case now!
What’s to stop the USPTO from rejecting every future application if they simply determine a “generic + .com” has not achieved the kind of “Booking.com” level of distinctiveness in the mind of the public to merit registration, putting the onus on the applicant to pursue the matter further?
It seems to me the answer is…nothing.
The purpose of the USPTO is to foster commerce.
Here’s a subtle thing that might have been missed: If Example.com is a TM, then the “.com” is an integral part of the mark itself, and can’t be removed willy-nilly, when it’s convenient for your argument. Thus, the plural of Example.com is actually Example.coms (“s” after the dot-com). To see this, consider if the mark was simply “.com” itself. What’s the plural of “.com”? It’s “.coms” (i.e. dot-com —> dot-coms).
In comparison, Examples.com is an entirely different and distinct animal. If “Example” by itself was the trademark. then “Examples” would be the plural of that mark. But, the holder of a TM for Example.com alone in its entirety doesn’t have rights to variations of “Example” standing alone (i.e. as I said before, they can’t just drop the .com from their argument when it’s convenient, and then circle back and add it later on).
The decision itself noted:
“Notably, a competitor’s use does not infringe a mark unless it is likely to confuse consumers. See §§1114(1), 1125(a)(1)(A); 4 McCarthy §23:1.50 (collecting state law). In assessing the likelihood of confusion, courts consider the mark’s distinctiveness: “The weaker a mark, the fewer are the junior uses that will trigger a likelihood of consumer confusion.” 2 id., §11:76. When a mark incorporates generic or highly descriptive components, consumers are less likely to think that other uses of the common element emanate from the mark’s owner. Ibid. Similarly, “n a ‘crowded’ field of lookalike marks” (e.g., hotel names including the word “grand”), consumers “may have learned to carefully pick out” one mark from another. Id., §11:85. And even where some consumer confusion exists, the doctrine known as classic fair use, see id., §11:45, protects from liability anyone who uses a descriptive term, “fairly and in good faith” and “otherwise than as a mark,” merely to describe her own goods.”
So, I think consumers will learn to “carefully pick out” and distinguish Example.com from Examples.com.
Of course, some overreaching trademark bullies will try to say otherwise, but I think there’s a strong argument for coexistence.
Agree. You can TM “drink” and it doesn’t prevent another person from TM’ing “drinks”. Likewise with the. com’s. This decision is good for the TM lawyers as owners of similar domains may need to get TM’s defensively. On the flip side, when you sell that domain, it should be worth more because now it comes with its own TM.
Excellent point, George.
I was going to raise the issue of merely “similar” vs. “confusingly similar” too, but you just did it a hundred times better than I would have. So as far as I’m concerned, the Drinks.com vs. Drink.com example doesn’t hold any water, shouldn’t, and if push comes to shove, should be decided in favor of whichever party is the recipient of any (predatory, unjust, and contrary to the interests of society, in my view) action. Should, that is.
And as far as I’m concerned, the Booking.com decision should not even be allowed to preclude use of a brand name such as “HotelBooking.com” by another party if the latter were to be registered and used today. In my view it is not reasonable or honest to allege “confusion” for ones like that either. Especially given that the Booking.com decision itself depends upon extreme fame and extreme distinctiveness to begin with.
The USPTO already has a history of rejecting example.com as a mark because of a mark on examples.com. There is a hundred/thousands of these domain name trademarks in existence. They aren’t like to allow similar registrations in similar classes.
I am not a lawyer, but John is right, the supreme courts decision is not all rainbows and butterflies. Common sense tells you that.
The supreme courts ruling is a double edged sword, there are bad and some good parts.
Two-word domains will not be affected very much by the Supreme Court’s ruling, status quo.
They will actually benefit because most two-word names can be trademarked.
This ruling is bad for generic one word aka dictionary .COM domains
But it is a great news for two-word combinations. Two word domains can be generic as well as brandable.
For example; If you have SocialCasino.com, or SocietyCasino.com or ChristianCasino.com or (????)Casino.com then those domains are now generic as well as brandable. Their value will now go up because someone getting a TM on Casino.com or Casinos.com will not impact these names.
It certainly wasn’t a bad ruling for generic one-word Booking.com.
Not sure, but word is that it will hurt the value of one-word generics if matching (singular or plural) gets the TM.
It will hurt the value of the opposite domain.
One-word generics like Travel (loan, loans, etc) will now compete to get TM and value of others that can’t get TM first will go down big time whether with .com or any other extension. Two-Word names will go up in value such as http://GreatTravel.com, http://LondonTravel.com, etc
They can still be challenged. So it’s risky branding on a two-word which contains the one-word generic. E.g. MyBooking.com, EasyBooking.com, HotelBooking.com. Now super generic word brands might include the .com in the TM. That itself is a bit risky, because will .com be king in 10 years?
Food for thought:
Filing an opposition to Drink.com in this example, would raise the cost of trademark approval for the filing company, which means they might be willing to buy the potentially ‘infringing’ Drinks.com domain as a defensive move that costs less than litigating…
Another important note is that it is actually REALLY HARD to get a Registered Trademark approved for a Generic Term that is used in a way that is obvious. Take Hotels.com for instance, whose application was denied by USPTO and that decision upheld in federal appeals many times.
In the end, the would be trademark registrant must PROVE that the public identifies their GENERIC-WORD.COM as a brand, which takes a LOT of TIME, and a LOT of ADVERTISING/MARKETING MONEY.
It seems doubtful to me that the new Supreme Court ruling will help very many domain owners secure trademarks for generic words unless they have EXTREMELY deep pockets or the public recognition is already in place.
Lonn is correct. This decision was most definitely NOT a fire hose for generic .com TMs; but merely a TM spritzer for those very, very few folks able and willing to spend perhaps millions to make their generic . com business well known enough to qualify for a U.S. TM.
However, it does increase the value of — especially single-word .coms (because .com is world dominate) — because end-users who DO have and are willing to spend the very big bucks necessary to qualify for TM registration can now (potentially) gain TM protection.
Rest assured, the PTO IS NOT going to hand out generic .com (or any other tld) TMs easily. Court fights against such PTO registration refusals are forthcoming.
What about Dillweed.com? The site has been online for 23 years with trademark notices continuously displayed. Is that trademark senior to Dillweed Inc’s application which may be placed tomorrow?