In the first-ever case in the U.S. Supreme Court argued by telephone, the Court this morning ruled 8-1 in favor of our client, Booking.com, N.V., one of the world’s leading digital travel companies. In the decision, written by Justice Ginsburg, the Court held that Booking.com, N.V. could register as a trademark its eponymous domain name, BOOKING.COM. After Booking.com prevailed in the lower courts, the Supreme Court accepted certiorari to decide “whether the addition by an online business of a generic top-level domain (‘.com’) to an otherwise generic term can create a protectable trademark.” The decision is significant because it recognizes that a domain name has the ability to function as more than simply a web address and can serve as a brand name that identify goods and services if consumers understand the domain name, in its entirety, to be a brand, not just a web address. The decision validates the reality that millions of consumers already recognize BOOKING.COM as a valuable brand in the market.
Along with co-counsel Williams & Connolly LLP, Debevoise & Plimpton LLP argued that, if the U.S. Supreme Court accepted the U.S. Patent and Trademark Office’s (“USPTO”) position, registrations of trademarks comprised of arguably generic elements ̶ including domain names like Weather.com, Wine.com, Law.com, and Hotels.com, as well as other marks like TV Guide, Home Depot, Salesforce, Pizza Hut, and The Container Store ̶ could be threatened. The decision embraced that argument and expressly recognized that, if the USPTO’s position were accepted, it would “open the door to cancellation of scores of currently registered marks.”
The Supreme Court’s decision is available here.
The Debevoise team representing Booking.com, N.V. was led by partner David H. Bernstein and included associate Jared I. Kagan.