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TMs for TLDs: Can descriptive domain names be registered as trade marks?

Earlier this year, the United States Court of Appeals ruled in the case of Bookings.com B.V. v US Patent & Trade Mark Office to find that the seemingly generic word mark “BOOKING.COM” was capable of trade mark registration. The decision has prompted commentary about descriptive domain names and whether they are capable of trade mark registration.

United States position

On 4 February 2019, the United States Court of Appeals for the Fourth Circuit ruled in favour of an Amsterdam-based company, Booking.com B.V. to find that the word mark “BOOKING.COM” has acquired sufficient distinctiveness to qualify for trade mark registration.

The question before the Court was whether “BOOKING.COM” was a generic or descriptive mark.

US trade mark law provides that generic words are not registrable as trade marks because they bear the actual name of products and/or services which everyone has the right to use. However, a descriptive mark which describes a good or service may be registrable if it can be shown that it has acquired distinctiveness.

The USPTO contended that the addition of the “.com” top-level domain (TLD) to a generic second-level domain (SLD) such as “booking” could never yield a non-generic mark This argument was ultimately rejected by the Court.

The applicant’s market survey evidence was key to persuading the Court in its decision. The evidence indicated that 74.8% of consumers recognised “BOOKING.COM” as a brand as opposed to a generic service. In light of this, the Court held that where evidence can demonstrate the mark’s primary significance to the public is as a source of the product and not the product itself, the addition of the “.com” to the SLD (even a generic one) could result in a non-generic, descriptive mark.

Australian position

Meanwhile, in Australia, a mark will not be prima facie capable of distinguishing if it consists only of standard address code material such as “.com” or “www.” plus an additional word, phrase, or numbers which other traders would wish to use in the normal course of trade. Accordingly, IP Australia will raise a ground for rejection in relation to domain names such as “WWW.SYDNEY.COM” and “BESTPRICE.COM”.

In addition, the fact that the trade mark applicant is the registrant of the domain name will not be sufficient to overcome the ground of rejection on its own.1 Evidence of use may support the submission that the domain name has developed a secondary meaning to indicate trade origin. However, IP Australia cautions that use of the mark will not necessarily equal distinctiveness. Instead, it notes that issues of distinctiveness are more likely to be overcome if the domain name forms part of a composite mark.

Notwithstanding this, it is notable that where a seemingly descriptive domain name is successfully registered as a trade mark, it may provide strong enforcement options against traders using similar marks or domain names. This is illustrated in the case of REA Group Ltd v Real Estate 1 Ltd [2013] FCA 559 where the Federal Court held that the use of the term “realEstate1.com.au” had infringed registered “realestate.com.au” logo marks.

REA Group (REA) held three composite marks, including a logo which contained the words “realestate” and the term “.com.au”. While the Court noted that no component of the logo on its own was sufficiently prominent, evidence of consumer recognition of “realestate.com.au” was sufficient to support REA’s proposition that the distinguishing feature of its logo was the domain name in its entirety. Hence, consumers were likely to pay substantive attention to the associated TLD as it identified the brand.

The Court concluded that there was a real danger that consumers may confuse “realEstate1.com.au” with “realestate.com.au” as they scan through a search results page, particularly as the “I” in the former domain name was not very distinct and likely to be missed. Accordingly, “realEstate1.com.au” was held to be deceptively similar to “realestate.com.au”. Nevertheless, the Court noted its discomfort in the ability of REA to hold such a significant monopoly over the use of the two highly descriptive terms.

Since the conclusion of the case, REA was able to successfully register “realestate.com.au” as a plain word mark in Australia subject to endorsements that the trade mark is capable of distinguishing due to REA’s prior use of the mark, and that the Registrar was satisfied that REA had continuously used the mark for a period beginning before the priority dates of cited marks.

Implications

The above discussion illustrates that descriptive domain names are capable of trade mark registration as plain word marks in both the United States and Australia provided that the trade mark applicant can point to a history of use of the mark and consumer recognition of the domain name as a brand. This is significant because as the case of REA Group Ltd v Real Estate 1 Ltd demonstrates, a descriptive domain name registered as a trade mark has potential to provide for strong brand protection and monopoly over seemingly descriptive terms.

If you are using a descriptive domain name to promote your business, you should consider applying and registering it as a trade mark in your key territories. This will help to ensure that all aspects of your brand are properly protected.

How can we assist?
Our Intellectual Property team has extensive experience in assisting with brand protection, trade mark, and domain name registrations. Please contact a member of our team should you require any assistance with protecting or enforcing your brand throughout Australia or elsewhere.

This article was written by Luke Dale, Partner and Stephanie Leong, Law Graduate.

Luke Dale

P: +61 8 8205 0580

E: lcdale@hwle.com.au


1Conversely, IP Australia can raise a separate ground to reject an application if the applicant of the mark containing a TLD is not the owner or authorised user of the domain name.

Important Disclaimer: The material contained in this publication is of a general nature only and is based on the law as of the date of publication. It is not, nor is intended to be legal advice. If you wish to take any action based on the content of this publication we recommend that you seek professional advice.