Should generic .com domain names never be entitled to trademark protection? When a domain name like booking.com is identified as a brand by the public, should it still be denied trademark protection as a matter of law? The ICA takes a position on this difficult question in an amicus brief submitted to the U.S. Supreme Court of the United States through its counsel, Wiley Rein LLP.

The brief asks the Supreme Court to affirm the current legal status quo as per the decision of the U.S. Court of Appeals for the Fourth Circuit holding that the addition of a top-level domain such as “.com” to an otherwise generic term may result in a protectible trademark where evidence demonstrates that the trademark’s primary significance to the public as a whole is the source of a product or service and not the product or service itself.

Many domain name owners have heavily invested in generic domain names which through extensive use and promotion, whether by domain name investors or a subsequent purchaser, are sometimes capable of acquiring distinctiveness and thereby affording trademark protection. Denying generic domain names the opportunity to ever be registered as a trademark would devalue otherwise valuable intellectually property assets by making them unappealing to companies seeking to develop brands that could be registered as trademarks.  Denying the possibility of trademark protection to generic domain names would not benefit domain name investors, but would rather harm them, by severely limiting the commercial potential of such generic domain names.

Additionally, new top-level domains – like “.homes,” “.inc,” “.doctor,” “.law,” “.bank,” “.cars,” “.news,” “.cpa,” “.ngo,” and “.organic” – hold great promise for improved e-commerce and online security, but their adoption will be stunted if the Government succeeds in foreclosing trademark protection for domain names in all cases, regardless of the degree of use and promotion.

The ICA’s Code of Conduct enshrines protection for intellectual property rights. The ICA’s brief explains how enabling trademark protection where warranted can help prevent two of the most common malicious activities involving the domain names, namely typosquatting and domain name theft. The ICA’s amicus filing supports intellectual property rights where warranted and stands against cybersquatting and malicious domain name theft.

To read the ICA’s amicus brief, please click here: Booking.com Amicus Brief

The ICA wishes to express its great appreciation to Wiley Rein LLP and attorney David Weslow (the winner of the inaugural ICA Lonnie Borck Memorial Award) for submitting such a well-argued brief on issues of importance to the domain name investment community.

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