The Complainant contends that the Respondent’s purchase of the domain name booking.eu from the first registrant during the Sunrise period was made in bad faith and lacks any legitimate interest, especially when considering there must have been clear knowledge of the Complainant’s prior rights to the trademark “booking,” which the Complainant is using for the very same business activity as the Respondent.
The Panel observes that in cases involving highly descriptive and generic trademarks, the issue of any risk of confusion must be tested as set forth in Art. 21 of Regulation 874/04, and it must be carefully ascertained in order to avoid any type of monopoly on these generic words. This is particularly the case when generic and descriptive denominations are combined in device trademarks, described in Art. 7, c) and d) of Council Regulation n.40/94 on the Community Trademark and relevant national transposition laws.
Therefore, the Panel finds that “booking” is clearly describing the activity taking place, i.e., booking on-line, and the word is generally used for making reservations, as proven through widespread use of the word by professionals in the travel and tour industry on a national and international basis. And, using it as a domain name could not create any confusion as to who is offering the service, even when used by a competitor.
As well, the Panel does not find that Complainant offered relevant documentation establishing any special and unique secondary meaning to the word “booking.”
Consequently, the Panel unanimously rejects the Complainant’s allegations that the Respondent lacks a legitimate interest in the name, especially as both parties entered into an affiliation agreement for using the Respondent’s website booking.it. Furthermore, Art. 21, 2, a) of Regulation 874/04 do not support the Complainant’s position. In addition, because the word “booking” lacks any special distinctiveness and matches the activity of the Respondent when applying for and using descriptive domain names (for its offer of such services in the tourism industry), the claims of bad faith are groundless.