Internet Domain Names & Metatag Controversies

Overview

What do you do if you want to learn something about new CLINIQUE lipsticks? You can type in such keyword as "CLINIQUE" and a search engine will generate a hit list, including a CLINIQUE website for you. After all, metatags, invisible words inserted in web pages by web developers, identify a company and help people locate a company on the web. Of course, metatags could also generate banner ads which appear above the hit list. http://207.154.137.50/guide/metatags.html.

Well, you wouldn't be so lucky if you used "Excite" as your search engine to search for a CLINIQUE site back in 1998. In Estee Lauder, Inc. v. Fragrance Counter, 1999 U.S. Dist. LEXIS 14825 (S.D.N.Y. 1999), search engine Excite refused to sell the key word CLINIQUE (an Estee Lauder comsmetics line) to Estee Lauder because it allegedly had entered into an exclusive agreement with the Fragrance Counter, a cosmetics retailer, for the on-line sale of cosmetics.

Welcome to the Controversial World of Internet Domain Names & Metatags!
In the real cyber world, not just the companies of trademark holders such as Estee Lauder purchase trademarks as keywords, everyone from rivals, distributors, or private website owners and non-profit organizations can purchase them as well. Moreover, ISPs sell banner advertisements above the hit list to whomever that are willing to pay. Although some trademarks such as Playboy are generic English words, some, like Porsche, are fanciful. No wonder tradmark holders sued not only those who purchased the keywords, but also the search engines that sold the keywords and the ISPs that sold the banner ads.

Since 1996, claims involving Internet domain names and metatag controversies have centered on trademark infringement, trademark dilution, false advertising and unfair competition. http://www.patentperfect.com/idea.htm. While the Ninth Circuit had issued some important decisions, the Supreme Court has yet to take certiorari in such cases. Brookfield Communs., Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999).
This website provides links to metatag cases AND links to digest of metatag cases.

In addition, this site offers links to articles that illuminate on the metatag controversies, inluding both law review articles and non-law-review-articles. A brief summary of the articles can be found in the parenthesis after the cite.

Please note that some links are multiple links. For example, the first 3 links of Other Articles offer links to 18 articles. So make sure that you don't miss these goodies. Actually, the best way to acquaint yourself with the Internet domain names and metatag controversies is to read some of the news articles, particularly the following ones:

Brenda Sandburg, The Name Game: As Fights Increasingly Erupt Over Internet Domain Names, Will Lawyers Rake It In? Probably Not, Sept. 8, 1999, http://www.callaw.com/stories/edt0908.htm (discussing issues, both resovled and unresolved, in the most recent metatagging cases).

Stephen W. Feingold, Trademarks: Means to Avoid Confusion, Or Property Rights?: Two Pending Cases Outline Dilema, N.Y. L.J., July 26, 1999, http://www.nylj.com, http://www.lexis.com (analyzing the issues in Estee Lauder & Brookfield).