Play.com: Rakuten domain asset now enters trademark application phase

Rakuten acquired Play.com, the former British e-commerce portal for approximately 25 million pounds sterling (approx. 3.3 billion yen) in cash.

That sale took place in 2011 and because it consisted of assets other than the domain name, it cannot be treated as a pure domain name sale.

Fast forward to 2022, Rakuten has applied for the registration of the mark PLAY.COM, consisting of standard characters, with the USPTO. The application was filed on the basis of existing Japanese trademark applications, that help Rakuten establish priority of its mark application in the US:

At this time, the applicant intends to rely on Section 44(e) as a basis for registration. If ultimately the applicant does not rely on Section 44(e) as a basis for registration, a valid claim of priority may be retained.

The list of products and services that Rakuten claims under the PLAY.COM mark is substantial; here’s only a small part:

Downloadable application software; Application software for collecting information of credit cards and electronic money and for making payment of credit cards and electronic money; Application software for helping users determine which clothes will fit them in terms of size, style, and price; Downloadable computer application software for providing electronic messaging services, text messaging and instant messaging services; Downloadable computer application software for providing access to audio and video; Computer application software for mobile phones, tablets, and handheld computers, namely, ecommerce software to allow users to perform electronic business transactions relating to e-commerce, mobile-commerce and online shopping via a global computer network; Downloadable mobile applications for use with wearable computer devices for mobile computing, fitness tracking, health care monitoring, electronic messaging, instant messaging and text messaging; Downloadable mobile applications for use with wearable computer devices for providing access to audio and video;

Registered in 1995, the domain name Play.com does not seem to resolve currently; a month ago, it was forwarding to Rakuten.com.

Applying for the registration of matching marks is an ongoing trend among owners of generic domain names, following the decision by SCOTUS on the Booking.com trademark application.

Since then, dozens of generic domain names have been applied to be registered as trademarks, inclusive of the TLD.

As of January 5th, 2021, BOOKING.COM is a registered trademark with the USPTO.

Will these applications become the new norm? Watch this video from NamesCon Online 2020.

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