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

Today, 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.