The Booking.com court decision has opened Pandora’s box, as many applications for registering trademarks matching generic domain names are deficient in their approach.
Many generic domain owners are now filing for matching trademarks at the USPTO. Domains such as Jerky.com seem to take the right approach, relying on existing use, while others such as Ladder.com are filed with an “intent to use” the mark in commerce.
Here comes the application for SHINE COM and its Korean applicant cites the following usage for the mark:
“carpet beaters, not being machines; utensils for household purposes, namely, forks, tongs, turners, graters, kitchen tongs, strainers, spatulas; pads for cleaning; cloths for cleaning; non-electric carpet sweepers; metal wool for cleaning; steel wool for cleaning; kitchen utensils, namely, dishers, serving scoops, pouring and straining spouts, splatter screens; dusting cloths; cosmetic utensils, namely, cosmetic brushes, cosmetic spatulas, droppers for cosmetic purposes, and microdermabrasion sponges for cosmetic use; pet hair remover rollers; pet hair removers, namely, lint rollers and lint brushes; pet hair removers in the nature of a felt lined roller that grips and collects hair; pet hair remover sponges”
The mark is using “Shine com” as the literal element of a color mark application, that claims a yellow, smiling sun as part of the mark.
SHINE COM trademark application – Source: USPTO
But it’s confusing to see that SHINE COM could point someone to visit the domain Shine.com, all while the two are unrelated.
Shine.com is an Indian job portal, and its logo depicts a yellow arch above the word “shine.” In our non-expert opinion, SHINE COM is 99% a prompt to associate the mark with the domain Shine.com – all that is missing is one minuscule dot.
We’d anticipate such potential confusion to increase further in the future, as domain names are seen as a brand/trademark/domain combo.
