Competition a Key Issue in Supreme Court Booking.com Trademark Case

The potential anticompetitive impact of trademarking domain names created by adding a generic top-level domain (gTLD) such as .com to an otherwise generic terms like "booking" is at issue in a case before the U.S. Supreme Court. The Patent and Trademark Office, backed by the Electronic Frontier Foundation, seeks a per se rule barring such domain names from being protected. Intellectual property scholars and lawyers and online companies disagree, although some also note anti-competition concerns. Case documents in PTO v. Booking.com (No. 19-46), which is set for argument March 23 (see 2001310027) are here.

Allowing a business to claim trademark rights in the combination of a generic term and gTLD "would undermine the purpose of the generic names rule: to forestall the competitive harms of allowing one market participant to exclude its competitors from using a common name for their goods and services," EFF said. Booking.com rivals might, for example, be prevented from using booking.biz or similar names.

EFF "is not aware of registrations for marks combining generic words or phrases with gTLDs like .com that have to date been used to initiate anti-competitive threats or litigation," emailed counsel Alexandra Moss. Nevertheless, Booking.com's position that the domain name "ebooking.com" is potentially infringing "confirms that granting a registration for "booking.com" would put competitors using different domain names at a greater risk of liability than they are now." Anti-competitive harms of this sort are likely to evade detection because trademark disputes are often resolved privately but require businesses to stop using names or engaging in economic activities that would otherwise have been available to them, and thus to the public, Moss said.

The American Intellectual Property Law Association (AIPLA) disagreed with the PTO, saying genericness should be evaluated case by case. Nevertheless, it urged the court to "be mindful of anti-competitive concerns." Whatever rule the high court adopts "should be highly attentive to the risks of competition of over-assertion of registered marks that are largely or entirely comprised of generic elements," AIPLA said.

Those concerns are misplaced, said Debevoise & Plimpton intellectual property litigator David Bernstein, Booking.com co-counsel, in an interview. For famous trademarks such as Gucci, trademark protection is very broad and can prevent the name from being used in many contexts. Booking.com, however, is descriptive and therefore on the weak end of the protection scale, and the company doesn't intend to stop people from using the term "booking" in other trademarks and websites unless it creates consumer confusion.

Companies such as Booking.com need trademarks to prevent phishing, spoofing and other fraudulent activities that harm consumers, said Bernstein. Without such protection, they can't use ICANN's uniform dispute resolution policy or takedown procedures offered by ISPs and online platforms, nor can they stop brick-and-mortar infringements of their marks, he said. If the government's position prevails in the high court, "it would upend decades of settled trademark law -- as well as the legal tools organizations commonly use to prevent fraud and cybercrime resulting from abuse of the domain name system," said a brief by Wiley Rein law firm for the Internet Commerce Association.

Booking.com's brief noted PTO has granted many trademarks with generic terms. In recent years, however, it has taken an inconsistent approach to trademark registration issues, Bernstein said. In this case, it has come out with a "radical new rule" saying domain names are different from other trademarks and their protection should be determined not by their primary significance to consumers but by a new per se rule barring trademarks for domain name comprised of allegedly generic words.