Web Trademark Suit Can Continue, Court Says

Rhett Pardon
ALEXANDRIA, Va. – In a case of particular interest to the online webmaster community, a federal judge decided last week that an Internet trademark infringement claim can continue.

The suit filed in U.S. District Court alleges that the top search engines are using a company’s trademark as search terms to drive Internet traffic to third-party advertisers.

The suit against Google Inc. and Overture Services Inc. by insurer Geico in May claims that the search engines are infringing on its trademark and diluting its value.

U.S. District Court Judge Leonie M. Brinkema denied a motion to dismiss trademark claims, finding that the plaintiff had alleged sufficient facts for infringement.

The suit comes after the dot-com crash when more Internet companies – whether tiny websites or huge heavyweight – are finding that the search engine business pays.

Geico, formally known as Government Employees Insurance Co., alleges that Google of Mountain View, Calif.-based and Yahoo subsidiary Overture of Pasadena, Calif., are selling the "Geico" trademarks as search terms or key words to third-party advertisers who seek to drive Internet traffic to their own websites when consumers perform a search using one of the Geico trademarks.

The suit contends that when surfers click on "sponsored listings" paid for by the advertisers, they are likely to be deceived into believing that they will be provided with information about Geico's auto insurance policies.

But such sponsored listings often provide no information about Geico's policies, the suit said.

Chevy Chase, Md.-based- Geico is asking the court for a permanent injunction, attorneys fees and civil damages.

The defendants cited the following cases:

— U-Haul International, Inc. vs. WhenU.com, Inc., 279 F Supp 2d 723 (E.D. Va. 2003), which held that pop-up advertisements that covered up or appeared alongside websites did not infringe the site owner's trademarks.

— Wells Fargo & Co. vs. WhenU.com, Inc., 763, 293 F Supp 2d 734 (E.D. Mich. 2003), which said that the use of a company's trademarks as keywords to trigger the display of pop-up advertisements did not constitute a use in commerce. That case addressed the exact issue in this case.

— Interactive Products Corp. vs. A2Z Mobile Office Solutions, 326 F3d 687 (6th U.S. Circuit 2003), which held that using a trademark as part of an Internet address, but not part of the second-level domain name, was not infringing.

The plaintiffs cited the following cases:

— 1-800 Contacts, Inc. vs. WhenU.com, 309 F Supp 2d 467 (S.D. N.Y. 2003), whose ruling was the opposite of that in the Wells Fargo case.

— Playboy Enterprises, Inc. vs. Netscape Communications Corp., 354 F3d 1020 (9th U.S. Circuit 2004), whose facts were similar to those in this case, found use in commerce when trademarks were used as keywords to trigger advertising.

— Bihari vs. Gross, 119 F Supp 2d 309 (S.D. N.Y. 2000), and Playboy Enterprises, Inc. vs. AsiaFocus International, Inc., No. Civ.A.97-734-A (E.D. Va. 1998), found a use in commerce when trademarks were used as metatags to attract "hits" to a competitor's website.

In his decision to allow the Geico case to move forward, Brinkema relied heavily on People for the Ethical Treatment of Animals v. Doughney, 263 F3d 359 (4th U.S. Circuit 2001), where the defendant had registered the plaintiff's mark as a domain name.

That decision"specifically rejected the argument that the defendant's use of the PETA trademark in a domain name was not in connection with goods and services," Brinkema said.

The suit is Government Employees Insurance Co. vs. Google Inc., No. 1:04CV507.