Shifting the Paradigm in E-Commerce: Move Over Inherently Distinctive Trademarks, the E-brand, I-brand and Generic Domain Names Ascending to Power?

Abstract

“What's in a name!” laments Juliet at her Shakespearean balcony. Four hundred years later, in the world of e-commerce, Juliet's question would be “What's in a domain name?” After spending all of the Montague's wealth, Romeo might be able to respond, “Call me but love.com.” The price tag for some generic domain names cost a small fortune: Sex.com for $250 million, Business.com for $7.5 million, Broadband.com for $6 million, Loans.com for $3 million, Flu.com for $1.4 million, and Bingo.com for $1.1 million.

In 1995, Procter and Gamble registered hundreds of generic domain names and offered them for sale at auction web sites five years later. The high price tags on generic domain names in the world of electronic commerce (“e-commerce”) represents a challenge to established trademark law. Internet companies spend large sums of money to acquire generic domain names and then expect certain legal protections for their investment. They look to trademark and unfair competition law to protect their domain names. Large monetary investment and high speculation in generic domain names bring into question whether trademark and unfair competition law can protect generic domain names. This conflict gives rise to several issues. First, whether trademark and unfair competition law under the Lanham Act should be extended to protect generic domain names that are highly valued in e-commerce. Second, whether extending the established trademark law to generic domain names will destroy the basic fabrics of trademark jurisprudence. Third, whether the extension hinders the growth of e-commerce to grant trademark exclusivity to generic domain name. Finally, whether it contradicts the existing domain name system that provides registrations on a first come first serve basis where registration of almost identical domain names, such as computer.com and computers.com, are allowed to co-exist peacefully.

Part I of the Article will focus on the trademark paradigm before the arrival of e-commerce. The historical roots of trademarks and development of modern trademark law will be discussed to provide an understanding of trademarks and their functions in commerce. Part II will address how e-commerce fosters the creation of online branding with generic domain names. The demand for generic domain names in e-commerce is at a feverish stage and online companies are willing to pay high price tags for domain names solely for the purpose of getting Net surfers, i.e., potential customers, to their sites. Part III will examine the functions of domain names and whether such functions could be qualified as a trademark function. Finally, Part III will also examine whether a domain name that is capable of functioning as a trademark, but is not a valid trademark, can be protected under unfair competition law.

Keywords: trademarks, domain names, distinctiveness, distinctive trademarks, generic, generic top level domains, website, e-commerce, Internet, unfair competition