Wednesday, November 08, 2006

Using the Google TM in your URL

Saw a post on Google Blogoscoped that has me concerned. It appears that Google has cut off a Blogger user's AdSense account because his blog, Google Operating System, has the word "Google" in its url: googlesystem.blogspot.com. Despite the blog's efforts to clear up any confusion, Google is maintaining its stance, according to its Guidelines for Third Party Use of Google Brand Features, that you can't register Google TM's as "second-level domain names" (a fancy technical way of saying URL). While there's no legal action going on, Google has shut off GOS's AdSense account until the problem has been addressed. Can I really not use someone's TM in my URL?

The answer is, obviously, it depends. It's not a problem per se to use someone else's trademark in a url. Domain disputes usually come in one of two flavors. The first is where the domain uses a trademark in a bad faith effort to confuse people and to capitalize on the good will of the trademark. This is obviously bad and will probably get your domain taken and money damages may be involved. The other is where the domain owner has a colorable claim to use a domain name that is similar to the trademark at issue. Using "Google" in a subdomain on a blog about Google would fall into this second category.

The doctrine called initial interest confusion says that a URL can mislead and confuse a user as to who is running the website and is an actionable offense under trademark law. In Brookfield Communications v. West Coast Entertainment, the court described this doctrine as being the equivalent to a video store putting up a sign saying "Blockbuster this exit" and diverting traffic to their store. No one would confuse the video store for Blockbuster once they got there, but that people intended to go to Blockbuster and that their desire was frustrated by the video store's use of the Blockbuster trademark is the harm that initial interest confusion addresses.

Initial interest confusion also covers situations such as those in PETA v. Doughney, where the defendant registered PETA.org for his website People Eating Tasty Animals. No one could confuse that for the real PETA website once they saw it, but that the URL was misleading was enough for the court to find against Doughney. Using "Google" in a domain name could trigger a similar result where people are confused into thinking that the site is sponsored or provided by Google itself.

One question is whether the average person thinks that googlesystem.blogspot.com, or for that matter googlecopyright.blogspot.com, is a site that is sponsored and run by Google. This is totally debatable and unclear, though a convincing argument could be made that since Google is found at google.com and its services tend to be identified through subdomains (eg. maps.google.com, mail.google.com, etc.) a user wouldn't think that googlesystem.blogspot.com is a Google sponsored site. User sophistication is the x-factor here, because who knows if the average person is savvy enough to figure this out. And it certainly doesn't help that the Official Google Blog can be found at googleblog.blogspot.com, which follows the same structure as the two given examples.

Another issue is incorporating the Google mark into a domain and whether that creates confusion, separate from initial interest confusion and a standard trademark claim, under the AntiCybersquatting Consumer Protection Act, 17 USC 1125(d). In Ford Motor Company v. GreatDomains.com, the court found that vintagevolvos.com and volvoguy.com (among other sites) were confusingly similar to Ford's trademarks. The court said that, generally, "a domain name that incorporates a trademark is 'confusingly similar to' that mark if 'consumers might think that [the domain is] used, approved, or permitted' by the mark holder" and that "slight differences between domain names and registered marks, such as the addition of minor or generic words to the disputed domain names are irrelevant." This rationale suggests that googlesystem.blogspot.com is in fact "confusingly similar."

Along with confusion, a trademark owner must also show bad faith by the domain owner. In the Ford case, the court noted that the Senate and House intended that "the use of a domain name for purposes of comparative advertising, comment, criticism, parody, news reporting, etc., even where done for profit, would not alone satisfy the bad-faith intent requirement." So even if googlesystem.blogspot.com is confusingly similar to Google's mark, since it's done for the purpose of comment, possibly criticism, and news reporting about Google, it would be ok and not an infringement upon Google's trademark.

Since the use of "Google" in googlesystem.blogspot.com falls into a gray area (how gray? charcoal) it is unlikely that Google would take any formal legal action against the site over its domain name. But, as GOS found out, just because Google won't sue for trademark infringement doesn't mean that Google has no remedy.

The terms of service for AdSense say in section (5)(viii) that the user is prohibited from "act[ing] in any way that violates any Program Policies posted on the Google Web Site, as may be revised from time to time" and that any such act is a "material breach" of the terms of service and that Google can immediately suspend or terminate the user's AdSense account. Thus, a violation of Google's TM guidelines is a prohibited act that can lead to the suspension or termination of an AdSense account. Again, always check through these terms of service and try to act accordingly, especially if you plan on generating income.

What is disturbing about how these terms of service agreements work out is that, effectively, Google won't do business with a user that engages in fair use of Google's TM. Google has every right to chose with whom and on what terms it wants to do business, but given its market share in online advertising (25% of all online ad revenues in 2006), Google's ability to dictate speech based on its advertising terms seems a bit suspect. To be fair, I'm painting an extreme picture here and GOS has been around for about a year before Google caught on so it's not clear that Google is all that active in policing this type of use, but it's not a sound strategy to rely on Google's motto "don't be evil" to hope that Google won't shut down your AdSense account if you're "misusing" Google's TM. At least I don't have an AdSense account to worry about.
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