ARGOS - trade marks, domains, and google advertising

First there was metadata, then there was Google AdWords, the latest High Court dispute concerns the question: can the adverts which are displayed on a website constitute trade mark infringement?

Back in 1992, Argos Systems Inc (ASI), an American company specialising in CAD systems for the design and construction of buildings, registered the domain argos.com.  Several years later in 1996, Argos Limited, a well known UK retailer registered argos.co.uk.  Argos owned various EU and UK trade marks for ARGOS but was too late to the domain name party to secure the .com.

Between December 2008 and January 2012, ASI's website included Google AdSense ads to all visitors.  From January 2012 to December 2014, the website settings were reconfigured so that only visitors from outside the Americas saw the Google ads.  The vast majority of visitors to argos.com came from the UK and Ireland with the majority of these visitors (83%) immediately leaving the site.  Argos was understandably suspicious that the Google ads were left on for visitors outside the Americas with the intention of generating advertising revenue from Argos' name.  They were particularly peeved that some of the adverts which appeared on argos.com were for Argos itself and its competitors.  Argos alleged free riding and damage to the distinctive character and reputation of its trade marks.

ASI relied heavily on an indemnity in the contract between Google and Argos which conferred third party rights on ASI.

Not to be confused with...
Odysseus' dog

Can domain name + Google ads = trade mark infringement?

Argos argued that the combination of the domain name argos.com plus Google ads (some of which included ads for Argos or Argos' competitors) amounted to trade mark infringement.  This allegation failed for two main reasons: (1) Argos had consented to the use when it signed Google's terms and (2) in any event there was no targeting of UK consumers.

How did Argos consent?

It was common ground that the use of the domain alone was insufficient to establish trade mark infringement (or passing off). In order to succeed in its claim, Argos needed the domain name plus something else.

The judge found that:

1. when it signed up to Google's advertising service, Argos had expressly and unequivocally consented to ASI's use of ARGOS in its domain plus adverts for Argos' goods and services.  Therefore any claim founded on adverts for Argos appearing on argos.com was 'doomed to fail' because the Claimant had consented to this use.  
2. The clear terms in the AdWords terms, the judge noted that it had been open to Argos to block its ads from appearing on argos.com but had declined to use this feature. 
3. Even if Argos did not have direct knowledge of where its ads were appearing this knowledge was available to its advertising agency and was attributed to Argos under ordinary agency principles.

The judge was careful to point out this decision did not mean that by agreeing to the AdWords terms, advertisers were consenting to the display of other people's adverts on any third party website.  

If Argos had been able to establish that the Google adverts concerned Argos' competitors it might have been a different result.  However, the only evidence of competitor adverts appearing from Argos.com occurred following deliberate manipulation of the cookies (i.e. deleting browser history and searching for competitor websites). 

Why was ASI not targeting the UK?

or the Ben Affleck film

Argos accepted that without the display of Google adverts it had no case on targeting. The question of targeting was objective rather than subjective.  It was assessed from the perspective of the average consumer.  The judge considered there to be two types of average UK Internet user (i) enquiring and (ii) unenquiring.  The first would assume some connection with their browsing history if they saw a third party advert on a website.  The second would not worry about the reason for the ad being there.

The Judge noted that the majority of the visitors to ASI's website did so in error - UK consumers assuming that argos.com would be owned by Argos.  ASI obtained traffic to its site due to the domain name which they had lawfully registered.  The adverts which appeared on Argos.com could be divided into:

1. those for Argos which Argos had consented to when it signed up for Google AdWords;
2. those clearly not aimed at UK consumers (e.g. because the price was in dollars);
3. those which may be aimed at UK consumers;
4. those which were definitely aimed at UK consumers but were obtained as a result of cookie manipulation.