TM Application for “Hotels.co.il” rejected

Buy-Tech Telecommunications LTD. , the owners of the domain name http://www.hotels.co.il/ has filed a trademark application for the mark hotels.co.il (application number 234287) in classes 35, 42, 43 and 39. The Trademark Examiner rejected the application, based on lack of distinctiveness.

The Applicant appealed and raised his claims before the Deputy Commissioner, Ms Jaqueline Bracha. The Applicant has argued that the website is well known, acquired a reputation with both hotel owners and tourists, and also generates 70 million Shekels per year.

The Deputy Commissioner rejected the applicant’s claims based on the Federal Circuit Decision from the United States re Hotels.com L.P. 573 F.3d 1300, 91 USPQd 1532, where the Court ruled that the generic term “hotels” did not lose its generic character by placement in the domain name HOTELS.COM. She also pointed out scholars opinions from Kerly’s Law of Trademarks, who claims that a registration of a domain name doesn’t by itself create an IP or monopoly right but, rather a contract with the domain name authorities.
The Deputy Commissioner has also ruled that the mark hasn’t acquired secondary meaning and rejected the Appeal.

Application number 234287 – hotels.co.il