Businesses Using .CLUB and Other Extensions to Benefit from SCOTUS “Booking.com” Ruling

Choosing the right domain name for your business and building a brand is more important than ever. Descriptive extensions like .CLUB, .STORE, .APP, .VIP, etc. add instant meaning to your domain name. Entrepreneurs and domain registrants can now get a strong domain name for their businesses that explains what they do or who they are. Domain names with generic dictionary words or keywords have always been desirable and considered high value, but as generic terms, they have sometimes been difficult to protect as a brand. We’ve always believed that keyword domains with a descriptive extension can stand out as a brand because the extension adds recognized meaning and context. We’ve seen this with many keyword .CLUB domains such as Coffee.club, Soap.club, Gear.club, and many others.

Now the recent “Booking.com” ruling by the Supreme Court of the United States may pave the way for the combined generic term and domain extension to be trademarked, providing additional value and leverage for businesses choosing to use their domain name as their brand, such as the examples above.

Below is an article by that appeared in CircleID that states our view that the ruling made by the Supreme Court in the ‘U.S. Patent and Trademark Office v. Booking.com‘ re-affirms the importance and value of domain names with a descriptive extension.


Online Businesses Using .CLUB and other Domain Name Extensions to Benefit from Supreme Court “Booking.com” Ruling — Both ruling and dissent opinion give credence to the value of website addresses using descriptive domain extensions

In U.S. Patent and Trademark Office v. Booking.com, the Supreme Court of the United States has affirmed that generic terms including .com domain names may be trademarked when consumers do not perceive the mark to signify the class of services, with heightened distinctiveness and recognition attributable to top-level domains that add meaning like .club, .guru, and .vip.

Justice Ginsberg, writing for the court, explains: “[when] [c]onsumers […] do not perceive the term ‘Booking.com’ to signify online hotel-reservation services as a class[, …] a ‘generic.com’ term is not generic and can be eligible for federal trademark registration.” Thus, if a brand has enough goodwill and consumer recognition in the brand that the website creates a perception of the brand, rather than the class of goods, the website is trademarkable.

While Justice Breyer, the sole dissenter, disagrees with the court about whether .com can be appended to a generic term to create a trademarkable brand, he agrees with the court that website addresses using top-level domains which add meaning to the root term are trademarkable, explaining that “the principles discussed above may apply differently to the newly expanded universe of top-level domains, such as ‘.guru,’ ‘.club,’ or ‘.vip,’ which may ‘conve[y] information concerning a feature, quality, or characteristic’ of the website at issue.”

“We feel the court’s decision is very good news for any business using a strong domain name as their brand. Being able to obtain a trademark that includes their domain extension is a powerful statement and competitive advantage,” stated Colin Campbell, founder of the .CLUB registry. “We have always believed in the value of descriptive extensions such as .CLUB, that add context and meaning to a domain name, and the court’s ruling is a strong statement in support of such value.”

The Court’s Opinion Affirms Two Distinct Points

  • Domains which add meaning will be analyzed alongside the second-level domain for the purpose of making an otherwise generic domain non-generic. For instance, tennis.net will read “tennis.net” rather than just “tennis.” This gives enhanced trademark distinctiveness to top-level domains with meaning, such as “.guru, .club, or .vip”.
  • .COM domains are trademarkable with generic second-level domains if the proprietor can show that consumers do not perceive the entire domain to represent a generic class of goods. This corresponds to the requirement that descriptive marks acquire secondary meaning in the minds of consumers.

We see this as very good news for online businesses that use their domain name as their brand.


ARTICLE SOURCE: http://www.circleid.com/posts/20200630-online-businesses-to-benefit-from-supreme-court-bookingcom-ruling/?fbclid=IwAR2CcyIvc-1FeWVWK2tEHBUMr48STbkuzWB75dxlNYL3z8jW83UQ1s0HWKw

About the Author

Jeff Sass

Jeff Sass is .CLUB's Chief Marketing Officer. You can follow him on Twitter at @Sass.

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