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posted 8 years ago
A recent U.K. case dealt with a claim for trademark infringement relating to the use of domain name and the impact of the Google AdWords and AdSense programs on the claim as well jurisdictional issues.
The Facts
“The Google AdWords program enables you to create advertisements which will appear on relevant Google search results pages and our network of partner sites. … The Google AdSense program differs in that it delivers Google AdWords ads to individuals’ websites. Google then pays web publishers for the ads displayed on their site based on user clicks on ads or on ad impressions, depending on the type of ad.”
The Plaintiff was a “Customer” and the Defendant was a “Partner” for purposes of these programs. At all material times under to the terms of the programs the Plaintiff granted not only to Google but also to the Defendant such rights as were necessary for Google and the Defendant to operate Google’s programmes.
The Defendant’s Website
At all material times the Defendant’s website received substantial traffic from visitors from the U.K. In fact close to 90 % of all visitors were from the U.K. but the vast majority of them leave the website very promptly.
By participating in the Google AdSense programme between about December 2008 and September 2015, the Defendant was able to generate advertising revenue from visitors to its website, many of whom were visiting that website in the mistaken belief that <argos.com> was the website address of the Plaintiff. A number of the advertisements which were placed on the Defendant’s website in this way were for the Plaintiff’s business, and such advertisements were placed on the Defendant’s website by Google as a result of the Plaintiff’s participation in the Google AdWords programme. The Defendant contended that these mistaken visitors caused serious bandwidth and other problems and real expense for the Defendant. The ads generated about US $100,000 in revenue for the Defendant who contended that it used this sum, in part, to offset the costs of the bandwidth and infrastructure modifications needed to host its website.
The Claim
As is the case in Canada if the plaintiff has consented to the defendant’s use of its mark this will be a defence to a claim for infringement. The Defendant contended that the grant of rights given by the Plaintiff in the AdWords terms constituted consent to the display of the Plaintiff’s advertisements by Partners, including the Defendant, on websites which are selected by Google to form part of the AdSense programme. This was subject to the Plaintiff exercising the right under the AdWords programme to opt out of having its advertisements placed on Partners’ websites in general or on Defendant’s website(s) in particular.
The Defendant also asserted that it had not performed any act within the territory of the Plaintiff’s rights, because Defendant’s website did not target consumers in the UK or the EU. Presumably by defending the action the Defendant waived the right to assert that the court had no jurisdiction but leaving that aside it is clear the rights associated with trademark are territorial and limited to the E.U.
The judge reviewed in great detail the cases in the U.K. and the E.U. dealing with targeting. He found that that there is no hard and fast rule that it was necessary to have regard to the entirety of the website, as opposed to, say, the landing or home page alone. It all depends on the circumstances. If the evidence shows that some part of the website is so configured as to attract a substantial number of UK users, it may be appropriate to have regard to that part of the website alone, even if, viewed globally the website is clearly not directed to UK users.
The judge disregarded the display of the Google ads because of his finding of consent. He concluded that it was clear that Defendant’s website was visited by many internet users based in the UK not only when ads were displayed on it but also before any ads were displayed on it, and that this had continued after ads were removed from it. This was overwhelmingly a product of mistake, and, to a significant extent, was due to UK users guessing or assuming that the <argos.com> domain name was owned by the Plaintiff. This traffic arises because the Defendant, entirely lawfully and properly, registered the <argos.com> domain name in 1992 either before the Plaintiff thought of registering a domain name at all, which it first did in 1996 or at least before the Plaintiff thought of registering <argos.com> as its domain name or one of its domain names. It did not arise because the Defendant had done anything to attract internet users based in the UK to its website.
As a result the action was dismissed and the counterclaim allowed.
Comment
John McKeown
Goldman Sloan Nash & Haber LLP
480 University Avenue, Suite 1600
Toronto, Ontario M5G 1V2
Direct Line: (416) 597-3371
Fax: (416) 597-3370
Email: mckeown@gsnh.com
These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.
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