Trademark Use in AdWords and Domain Names
Court of Amsterdam 26 February 2009, LJN BH4229
AdWords are 'search words' that you can buy from Google.
After typing in these words your website will be displayed in the
sponsored links next to the generic (normal) search results. If
this search word is a trademark of somebody else, this may
constitute an infringement of that trademark right.
This case concerned an investment management company (Wijs &
Van Oostveen) which traded in the investment product Dutch Power
Notes of the American Lehman Brothers (which is now bankrupt, as we
know). The price of the Dutch Power Notes had collapsed so much
that one of the investors, Mr. Veleke, had started a website to
complain about this investment management company. Wijs & Van
Oostveen instituted a case against Veleke and argued, inter alia,
that its trademark right had been infringed.
The claimant owns a word mark "Wijs & Van
Oostveen" for various classes relating to insurances and
advertising. The defendant (Veleke and later a Foundation
representing his interests) registered for his critical website the
domain names gedupeerdenvanwijsenvanoostveen.nl
(victimsofvanwijsenvanoostveen.nl) and wijsvanoostveen.nl,
among others. The defendant also filed the word marks "Wijs
& Van Oostveen" and "Gedupeerden Wijs & Van
Oostveen" for another class than the claimant's: legal
services. In addition to the trademarks the defendant also used
AdWords containing the names Wijs en Van Oostveen. Thus, if an
internet user is searching for information about Wijs & Van
Oostveen, through Google he will almost always end up on the
website of Veleke and will read Veleke's criticism of the
behavior of the investment management company. The claimant was not
happy with that and argued that there was a trademark infringement
and that the defendant was guilty of unlawful statements and
defamation of character.
Wijs & van Oostveen Dutch Power Notes price information
http://www.behr.nl/Beurs/H/wo.du.pwn.x.html
The Adjudication
Trademark Infringement
Trademark infringement is assumed, inter alia, if the use meets the
following criteria pursuant to Article 2.20 (1) of the BCIP:
- the sign is identical with the trademark and is used in the
course of trade for goods or services which are identical with
those for which the trademark is registered (under a);
- the sign is used other than for purposes of distinguishing
goods or services, where the use of that sign without due cause
takes unfair advantage of, or is detrimental to, the
distinctive character or the repute of the trademark (under
d).
In this case the Court ruled that the defendant had
registered/put into use the word marks, domain names and the
AdWords for the sole purpose of attracting the attention of clients
of Wijs & Van Oostveen and criticizing the behavior of Wijs
& Van Oostveen. The Court was of the opinion that this
trademark use was use other than to distinguish goods or
services, without due cause, and assumed trademark infringement
pursuant to Article 2.20 (1) under d of the BCIP.
Unlawful statements
The claimant also argued that unlawful statements had been made.
The Court weighed the freedom of expression of the defendants
against the interest of Wijs & Van Oostveen in not being
accused too rashly. In the end, the Court held that it weighed
heavily that the website mainly reflected the initiator's
personal vision and experiences with the Dutch Power Notes, and did
not consider it unlawful. (Read the full ruling
here in Dutch).
Freedom of Expression as Valid Reason for Trademark Use?
Unlike the Court, it could also be argued that Veleke
had a valid reason for the use of the trademark "Wijs &
Van Oostveen" and that it is allowed to expose and promote
criticism on the practices on the basis of the freedom of
expression (Article 10 of the ECHR). This reasoning is not very
remarkable, since there is a lot of discussion regarding the
freedom of expression and referring trademark use with respect to
complaint sites. See also the case
injeholland.nl (in Dutch), in which the
Court ruled that complaint sites may, in principle, be conducted
and that such sites are free to use a trademark in a referring
way. (Please note: In the injeholland.nl case the Court
eventually did assume trademark infringement, because the use of
'injeholland' was not decent and thus detrimental to the
repute of the trademark INHOLLAND).
More About AdWords
In a Belgian case between eBay and The Polo/Lauren Company before
the Court of Appeal of Brussels dated 11 February 2009
(link to English version) the Court actually
ruled concerning AdWords that there was no question of trademark
use other than for purposes of distinguishing goods and
services. This case is about eBay having bought the AdWords:
"Ralph Lauren" and "Polo Sports". Since eBay
is an auction site and actually trades in the real products of
Ralph Lauren and Polo Sport on the site, the Court of Appeal
ruled that in this case there was no trademark use pursuant to
Article 2.20 (1) under d of the BCIP. This is understandable in
theory, but the Court of Appeal went quite far: it is not even
use under d if the sponsored links do not directly link through
to the Ralph Lauren product pages concerned. The Court of Appeal
casually suggested correctly that in this case this might be
trademark use pursuant to Article 2.20 (1) under a of the BCIP,
but Ralph Lauren had not relied thereon. For the time being,
trademark use in AdWords will remain a hot discussion item until
there will be more clarity, perhaps in the answers to the
preliminary questions that have been posed to the European Court
of Justice, inter alia in the French case between
Google and Louis Vuitton and the Dutch case
between
Portokabin and Primakabin.
Conclusion
Using an AdWord may damage the interest of a trademark proprietor
in various ways. Sometimes he can take action against such use,
while in other cases the use of AdWords is justified. In the case
of Wijs & Van Oostveen, the defendant only used the AdWords in
order to damage the repute of Wijs & Van Oostveen and that is
why the Court in preliminary relief proceedings ruled that this use
was not allowed. The same applies to the use of the trademark in
the domain names. It is true that as an 'investment victim'
of the Dutch Power Notes you can freely express your opinion, but
your freedom is restricted by trademark law.