“Did you mean?”

On 15 September 2003 the domain name provider VeriSign replaced the error message which is usually given when a user mistypes domain names with a Web page offering paid-for alternatives along with the caption “Did you mean?” This new Site Finder facility aimed to sell alternative unclaimed domains to users and let third party companies buy advertisements or promote themselves in some way related to the type of search being conducted.

Such innovations are usually to be welcomed and have led to many advances including the World Wide Web itself. However, VeriSign is the master-keeper of names ending in ‘.com’ and ‘.net’ and, as such, anyone looking for Web sites using these domains must consult its records. Given that every day more than 18 million users mistype the name of the .com or .net domain they want to visit, the actions of VeriSign had the potential to impact on a huge number of search engine users. The protests not only came from other net firms who feared that VeriSign would hijack their searches but also from other Web users who feared that the move could aid spammers. But perhaps an issue of more concern, which as yet has not been acknowledged in any significant detail, has been the harm suffered by the brand owners that are the subject of the incorrect search.

After having stood firm under intense criticism, VeriSign agreed on 6 October 2003 to suspend Site Finder. The Internet’s primary governing body ICANN had delivered an ultimatum to restore the previous service or face legal action. The implications from these developments will unfold in due time, but it does leave the crucial question of whether, from the point of view of the damage to brand owners, Verisign was acting unlawfully?

When the issue is considered from the perspective of trade mark holders three possible categories of defendants to any proceedings can be identified, namely: (1) the advertisers; (2) Verisign, which supplied the search engines with the Web addresses and which encouraged advertisers to purchase from them the opportunity to appear by sponsored listing on the search results pages or in an advert; and (3) the net firms which unwittingly display the results. This article considers from a UK perspective, the position of each in turn.

Advertisers

Since the advertisements/sponsored listings appear as one of the results of the search, there is a clear suggestion that they are relevant to the search that was carried out. There are three possibilities. Firstly, they are indeed relevant to the search in that they contain references to the trade mark and offer information related to the trade mark even though they may not be approved or licensed by the trade mark owner. Secondly, they initially appear to be relevant in that they mention the trade mark but on further investigation they do not satisfy the promises which they make. Finally, they have no relevance to the intended search but instead offer information relating to other goods or services.

If a site is indeed relevant to the search then it is difficult to raise objections to its listing in the search results. The lack of an official connection to the trade mark does not mean that they can be prevented from advertising the fact that they can supply a certain product or service. Section 10(6) of the Trade Marks Act 1994 provides that “the use of a registered trade mark by any person for the purpose of identifying goods or services as those of the proprietor or a licensee” is not an infringement unless the use is “otherwise than in accordance with the honest practices in industrial or commercial matters”, “is without due cause” and takes unfair advantage of, or is detrimental to the distinctive character or repute of the trade mark”. Sites which use the trade mark to indicate that they can provide certain goods or services originating from the trade mark owner will be held to be in accordance with honest practices in industrial or commercial matters.

It is with sites that initially appear to be relevant but which subsequently prove not to be that infringement is most likely to be found. If a site claims to provide a certain service or product, but does not do so, it is infringing the registered trade mark since this cannot be said to be in accordance with honest practices in industrial or commercial matters. They are clearly using the trade mark to attract business to their Web site on false pretences and they are taking unfair advantage of the repute of the trade mark. In these circumstances the advertisers may also be committing a malicious falsehood or trade libel in that they are making a false statement knowing it to be false and with the intention of harming the trade mark owner.

The most complicated situation is with sites that come up on the search but do not have any relevance to the search other than that they offer information about similar services or products. The issue is whether, even though the site itself contains no reference to the trade mark, the fact that they have taken steps to ensure that they appear on a particular page of results is actionable. It is suggested that it would probably be found that it is. Through causing a reference to their site to appear in the search result, they are using the trade mark to refer to their services or products. There is a clear taking of unfair advantage of the repute of the trade mark. Without the use of the trade mark the customer would not have looked at their site at all. Again, s 10(6) does not provide them with a defence because it is likely that such conduct will not be held to be in accordance with honest practices in industrial or commercial matters.

Verisign

Verisign offers the advertiser the opportunity to advertise their site by reference to the key word that they have chosen. Although the key word is selected and typed in by the advertiser, that word is adopted and incorporated into Verisign’s search and subsequent listing provided to the net firm.

In that respect, Verisign uses the trade mark in the course of trade. If the trade mark has a reputation within the United Kingdom then it is strongly arguable that the use by the service provider is without due cause and takes unfair advantage of the trade mark. If that is correct then there is a case for infringement under s 10(3). There is no requirement for confusion in that it is not necessary for the intending advertiser to think that the advertising is connected with the owner of the trade mark. All that is required is use of the trade mark with a lack of due cause and unfair advantage or detriment to the trade mark. There is no defence under s 10(6) available to Verisign as the use is not for the purpose of identifying services as those of the proprietor or a licensee.

Net Firm

Insofar as any net firm appears to be unwittingly displaying listings that are supplied to it by Verisign then it is unlikely to be held to be infringing the trade mark. The net firm is not using the trade mark in the same way that Verisign is. Furthermore, it is not possible to demand that a net firm ensure that anyone that seeks to advertise on their pages has the authority to use a trade mark that they may include on their Web site.

Conclusion

The areas of the Trade Mark Act discussed in this article are rapidly evolving areas of the law and it is difficult to be sure how the courts will apply the provisions in the situation outlined in this article. What is clear, however, is that the use of advertisements and sponsored listings has the potential to generate such phenomenal revenues that their existence is not going to diminish. As such, the issue of infringement of intellectual property rights by either Verisign, the advertisers themselves or, as is common generally on the Internet, by the net firms themselves, will come before the courts. When this does occur, the question raised, at least by the alleged infringers to their lawyers, will more likely be “Can you help?” rather than “Did you want?”.

Simon Chapman is a Partner in the Intellectual Property, Technology and Media Group at Laytons.