The U.S. Supreme Court’s opinion on trademark rights for the domain name <booking.com> has generated a lot of discussion about the use of generic words in domain names, but one footnote from the Court that has attracted little attention is especially interesting.
In discussing the U.S. Patent and Trademark Office (PTO)’s history on the <booking.com> application, the Court said the trademark office considered every “generic.com” term to be generic, absent exceptional circumstances (a position that led to the Supreme Court, which disagreed, holding that the addition of a top-level domain (TLD) to a generic word is capable of creating a descriptive mark that may be protected by a trademark registration).
Then, in a little-noticed footnote, the Court added:
The PTO notes only one possible exception: Sometimes adding a generic term to a generic top-level domain results in wordplay (for example, “tennis.net”). That special case, the PTO acknowledges, is not presented here and does not affect our analysis.
While that intriguing “wordplay” issue did not arise in the Supreme Court’s <booking.com> case, it has arisen a number of times in disputes under the Uniform Domain Name Dispute Resolution Policy (UDRP), as I have written about previously.
Some UDRP decisions have referred to this sort of wordplay as “spanning the dot” — that is, where a word or phrase begins in the second-level domain (to the left of the dot) and continues to the top-level domain (to the right of the dot). This is an exception to the typical UDRP dispute, in which the top-level domain is, as the World Intellectual Property Organization (WIPO), says, “viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”
Some of the UDRP cases that have applied this exception to the rule have addressed the domain names <tes.co>, <swarov.ski> <tyre.plus>, <minnesota.life>, <six.net>, <me.tv>, <mr.green> and <b.mw> (the only UDRP case, as far as I know, that involved a single-character second-level domain).
In the <tes.co> decision, which a later panel (in a dispute over <judicial.watch>) called the “seminal case on this point,” the panel explained the role of the TLD this way:
The only consideration is whether, in registering the Domain Name with a particular TLD suffix, a respondent has sought to incorporate a complainant’s trademark in its entity by making use of that TLD suffix, such that it becomes a key part of the Domain Name. In the Panel’s view, if the TLD suffix is part of the Complainant’s trademark, whether forming part of one word, or a second and distinct word, it may be taken into account for comparison purposes.
This UDRP issue (whether a TLD is relevant when comparing a domain name to a trademark for purposes of determining if the domain name is identical or confusingly similar to a particular trademark) is, of course, different than the issue raised in the Supreme Court’s footnote on wordplay (whether a TLD may render an otherwise generic word something different, enabling it to be capable of trademark protection).
In other words, while UDRP disputes are about cybersquatting and trademark enforcement against domain names, the Supreme Court’s <booking.com> case was simply about trademark protection for domain names.
Still, the fact that the Supreme Court found this type of domain name worthy of mentioning is itself interesting, if not significant. If nothing else, it is an important reminder that domain name wordplay, or spanning the dot, is a tactic gaining greater recognition — which means that trademark owners should consider TLDs in their ongoing domain name protection and enforcement activities.
