hotels.co.il – can it be trademarked?

RIP

Buy-Tech Telecommunications LTD. has a domain http://www.hotels.co.il/ where various tourist related services, primarily hotel bookings, are sold.  Buy-Tech Telecommunications LTD. attempted to register a trademark (application number 234287) in classes 35, 39, 42 and 43. The Israel Trademark examiner rejected the application, seeing the term as generic and without distinguishing features.

The Applicant appealed, noting the scope of sales which apparently is some 30,000 deals worth 70 million shekels annually, and claimed that the site was well known and they had acquired a reputation with both hotel owners and tourists.

The term hotel in Hebrew is בית מלון (bet-malon) literally boarding-house.  The applicants were willing to forgo rights in the word bet or bayit meaning house, and even in the word Malon which is sometimes used on its own to mean hotel. They argued that the combination bet+malon had acquired distinctiveness.

Deputy Commissioner, Ms Jaqueline Bracha rejected this argument. She quoted from Kerly, Mc Carthy and others about the difference between domains and top level domains which are often generic, with their registration being the result of a contract between the domain registry and the domain holder, and trademarks which have to have some distinctiveness, whether integral or acquired.

In a neat touch, she cited a Federal Circuit Decision from the United States, re hotels.com L.P. 573 F.3d 1300, 91 USPQd 1532 where the USPTO decision not to allow hotel.com to be registered as a trademark was discussed.

We agree with the TTAB that for the mark here to issue, the generic term “hotels” did not lose its generic character by placement in the domain name hotels.com… (p. 13)

We conclude that the board satisfied its evidentry burden, by demonstrating that the separate terms “hotel” and “.com” in combination have a meaning identical to the common meaning of the separate components. 

The appeal was rejected.

COMMENT

Registering a domain name is no indication that a word mark can be registered. If the applicant had chosen a distinctive name, they might be able to prevent similar names being used as domain names. By going the generic route, they have essentially given up on that. Very many of my colleagues have domains like Israel-patents, israel-copyright, patent-israel, ipisrael, etc. None have tried to block out the others – not because they wouldn’t like a monopoly, but because they are aware that they don’t deserve one.

I use ipfactor.co.il  as a domain name. I don’t believe I have rights to IP. There is an icelandic firm of patent attorneys called Faktor, and a US licensed practitioner who is living in Israel but not licensed here called Haim Factor (no relation as far as we are aware).  I’ve jokingly crossed swords with another blog, ipfacto. I possibly could have sued them.

Domain names may be generic. Trademarks have to be distinctive. Nevertheless, a registration may be useful to show use and market awareness for a term that has at least minimum distinctiveness. A phrase composing two common words may be distinctive. Bet-Malon is about as distinctive as school-house, petrol-station or green-grocer.

 

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