Counterfeiting sponsored links on Yahoo: the complaint is admissible.

Illustration nom de domaineOn June 9, 2014, a federal district court in California refused to dismiss the complaint lodged by against U.S company, Yahoo for the second time in less than six months. is a company specializing in the online sales of car parts. It alleged that the keyword “parts” on the Yahoo search engine refereds to a direct competitor. The trademark would thus allegedly be used as a keyword, which entails an infringement of its rights. sued Yahoo and its competitor which avails itself of the keyword for referencing purposes.
Last December, Yahoo contended that the term “parts” was descriptive and could thus not be registered as a trademark. Yet the federal court had cast aside the issue, holding that Yahoo’s argument was premature. The proceedings had been allowed to continue in this respect.
The gist of the argument put forth by centers on the sponsored links of the search engine. The company states that these links which steer towards competing sites divert internet users and the profits of to other companies. According to the plaintiff, this results in a drop in sales, returns on investment, trademark dilution as well as additional losses.
In its reply, Yahoo did not depart from its argument and asked for the proceedings to be dismissed in the absence of any trademark right on the words “”. The US giant also requested the court to sentence for abuse of process. It cited the Communication Decency Act, which provides that the provider of an interactive service cannot be treated as the publisher of any information provided by a third party.
The court therefore did not grant the second request of Yahoo, stating that the submissions of were serious enough for the case to be reviewed on its merits. It remains for the court to review the generic nature of the words “” and Yahoo’s liability for trademark infringement.
Several federal courts have already ruled as regards the lack of distinctive features in the names and , which, accordingly, have not been afforded the protection granted to trademarks.
This matter is reminiscent of the case-law relating to Google’s Adwords, where the company was repeatedly sentenced for having played an active role in selecting keywords and writing down advertisements. It remains to be seen whether the Californian court will adhere to this well established case-law.
Dreyfus can assist you if your trademark is infringed through keywords. Please contact us for any information you may require.