Article.

Can you register your ".com" domain as a trade mark?

09/07/2020

At a glance

Every business knows the enormous benefits associated with securing a top level .com domain name –particularly where they can capture a word describing their area of business. For many businesses, it is its .com name that is then its real brand.

Since .com domains are allocated worldwide on a first-come, first-served basis, it is unsurprising that domains have become a commodity at the centre of many high value transactions. For example, CarInsurance.com was reportedly sold for $49.7 million in 2010 and the start-up Jet.com was reportedly sold in a $3.3 billion deal in 2016.

But the key question is whether utilising a name with a ‘.com’ suffix makes an anodyne descriptive word then registrable as a trade mark.

This has been at the centre of Booking.com’s 8-year battle with the US trade mark office. Finally, the company did obtain its mark with a victory in the US Supreme Court earlier this month (see here: United States Patent and Trade Mark Office v Booking.com).

So what are the rules? A trade mark is a registerable intellectual property right. And a registered trade mark is there to distinguish the goods or services of a brand from those of another and gives the owner an exclusive right to use the registered sign in in relation to the goods and services for which it is registered, in the territories where the sign is registered.

If you have a properly registered domain that is exclusively yours, this does not mean you are automatically granted a registered trade mark.

In UK and EU a domain can be registered as a trade mark but only if it is sufficiently distinctive (i.e. not a generic term such as car, shop, wine, phone and hotels etc. used to describe the goods or services of the brand). However, since domain registrations are often sought by a brand precisely for these purposes, the key issue in many applications is whether adding “.com” is capable of making a mark distinctive and so registrable as a trade mark.

The legal approach has changed dramatically in recent years. In 2006 the EU IPO (or OHIM as it was called then) rejected a trade mark registration for “SPORTSBETTING.COM” on the basis that it was nothing more than a combination of descriptive terms “sport”, “betting” and “gaming” services. In doing so, it explained that adding “.com” merely conveyed to the consumer that those services were available on an internet site.

This approach was also adopted by the UK IPO in 2007 in relation to “MUSLIMHERITAGE.COM”. As a consequence, it has meant that many brands with generic names could only register a trade mark for its logo (which could usually be sufficiently distinctive) and not its name.

However, to the relief of certain brand owners investing heavily in e-commerce, in 2006 Easy Group was granted a registration of a trade mark for “EASY.COM” on the basis that it was sufficiently distinctive when looking at the combined parts of the domain – the word easy AND the .com suffix.

On 30 June 2020, the US Supreme Court similarly held that “BOOKING.COM” was capable of trade mark registration on the basis that the majority of consumers (when considering the whole mark) did not see “booking.com” just as a generic term to describe hotel and travel booking services available online; rather the vast majority understood it to be a particular brand whose services are available at that specific domain. Consequently, it was capable of identifying the source of the brand and available for registration.

This ruling is consistent with earlier US decisions which permitted the registration of “ART.COM” and “DATING.COM” and firmly places “.com” domains (and other domains) in the category of registerable marks.

The change in approach to trade mark protection of domains in recent years is significant. It is likely to provide an alternative route to trade mark protection – both here in the UK and in other jurisdictions – for many established brands whose name consists of generic terms to which is added a .com or other suffix to create distinctiveness.

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Robin Fry

Robin Fry Consultant, Solicitor, Commercial, IP & Technology

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