Articles Posted in Intellectual Property

Apparently there are still some people who think they are being clever by registering domain names confusingly similar to trademarks or domains used by existing companies, hoping to capitalize on the confusion.  And what better target than Citibank, a giant company with an easily misspelled name!  Judge Hilton of the Eastern District of Virginia, who is well versed in intellectual property issues, decided to teach a lesson to such a schemer in the case of Citigroup, Inc. v. Shui, Civil Action No. 08-0727, on February 24, 2009.

The Defendant, Chen Bao Shui, thought it would be a good idea to register CITYBANK.ORG and use it to market financial services.  When visitors would go to his site, they would see links to, among other things, “Citibank Student” and “Citibank Visa.”  Clicking on such an option would not take the visitor to Citigroup, of course, but to another citybank.org page or to a third-party vendor who would pay the Defendant for each click-through.  In other words, the Defendant’s plan was to earn money by confusing customers into believing they were dealing with Citigroup when they were dealing with an unrelated, unaffiliated entity.

This is exactly the sort of activity prohibited by the Anticybersquatting Consumer Protection Act, found at 15 U.S.C. 1125(d) (the “ACPA”).  A violation of the ACPA exists where (1) a defendant has a “bad-faith intent” to profit from using the domain name; and (2) the domain name at issue is identical or confusingly similar to the plaintiff’s distinctive or famous trademark.

Trademark owners take note: whether or not you participate in Google’s Adwords program to advertise your business, your competitors may be using your trademark as a keyword in promoting their competing business.  Google not only allows this potentially infringing practice, it encourages it!  The company actively and openly sells competitors’ trademarks to advertisers seeking to divert potential customers to the advertisers’ websites.

It remains to be seen, however, how long the courts will permit this practice to continue.  On April 3, 2009, a federal appeals court sitting in New York decided to allow a case to go forward in which a computer-repair company called Rescuecom sued Google for trademark infringement.  The case is Rescuecom Corp. v. Google, Inc., Case No. 06-4881 (2d Cir.).

The complaint involves two of Google’s programs used in Internet advertising: AdWords and Keyword Suggestion Tool.  With AdWords, advertisers purchase keywords relevant to their business.  When a purchased keyword is used in a Google search, the advertiser’s ad and link appear on the search results page, either in the right margin or in a horizontal band immediately above the relevance-based (i.e., non-sponsored) search results.  The Keyword Suggestion Tool recommends keywords to advertisers.  Among its recommendations might be the trademark owned by the advertiser’s competitor.