But in his lone dissent, Justice Stephen Breyer argued for turning this logic around: the domain-name system already guarantees exclusivity for the holder of a domain like booking.com. So why does a domain name need to be trademarked in the first place? After all, a company that doesn’t own the booking.com domain is unlikely to want to adopt that trademark, since it would just be funneling business to the domain owner.
And while it’s true that Travelocity wouldn’t describe itself as “a booking.com,” Breyer notes, it also wouldn’t describe itself as “a Booking Inc.” Yet trademark law prohibits anyone from trademarking such a generic company name.
Breyer argued that what’s really at stake in this case is the ability to register domains that are similar but not identical to booking.com. Thanks to today’s ruling, booking.com could “threaten trademark lawsuits against competitors using domains such as bookings.com, eBooking.com, booker.com, or bookit.com,” Breyer wrote. While Booking.com insisted that it wouldn’t do that, Breyer noted, other companies might not be so restrained.
Hence, Breyer warned, allowing the registration of generic domains like booking.com could enable companies to effectively monopolize the use of the generic term in conjunction with a dot-com domain name. In this sense, it raises the same issues as allowing trademarks for company names like “The Booking Company” or “Bookings Inc.” That is, it could allow one company to monopolize a term that describes an entire industry, not just one company.