• Pop Up Ads Enjoined
  • February 17, 2004
  • Law Firm: Graydon Head & Ritchey LLP - Cincinnati Office
  • Using a plaintiff's trademarks to trigger the appearance of competing pop-up ads when a user accesses the plaintiff's Web site runs afoul of federal trademark laws, according to a New York federal trial court.

    The trademark infringement case was initiated by 1-800 Contacts Inc., an online contact lens retailer against its competitor and the developer of the pop-up ad software. The court granted a preliminary injunction enjoining the ads under the Lanham Act. The court also ordered cancellation of the defendant competitor's registered domain name under the Anticybersquatting Consumer Protection Act.

    The defendants in the case were WhenU.com and Vision Direct Inc. WhenU.com is an Internet advertising company. Vision Direct Inc. is a direct competitor of 1-800 Contacts Inc. WhenU.com developed software that caused pop up ads for Vision Directs website to appear when a computer user visited 1-800's website. Vision Direct also maintained a registration in the domain name www.www1800contacts.com.

    1-800 brought a number of claims, including claims under the Lanham Act and the Anticybersquatting Consumer Protection Act.

    The Lanham Act prohibits the use in commerce, without consent, of any "registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods," in a way that is likely to cause confusion, the court continued, quoting the statute at 15 U.S.C. ยง 1114(1)(a).

    The court found that the defendants "used 1-800's mark in commerce" because the Vision Direct pop up ad was triggered by a user's visit to 1-800's website on which its trademark appeared. Having established "use," 1-800 argued that the pop up ads resulted in initial interest confusion. The court agreed, finding: "The harm to Plaintiff from initial interest confusion lies not in the loss of Internet users who are unknowingly whisked away from Plaintiff's website; instead, harm to the Plaintiff from initial interest confusion lies in the possibility that, through the use of pop-up advertisements Defendant Vision Direct 'would gain crucial credibility during the initial phases of a deal...'"

    As the court explained: "It seems likely that a SaveNow user, thinking the Vision Direct pop-up advertisement generated by SaveNow was part of the 1-800 Contacts website, might be lured into clicking on the Vision Direct SaveNow pop-up advertisement, which would result in the user's main browser window shifting to Vision Direct's website, making likely that the consumer's attention and interest would shift to Vision Direct's website, and that ultimately the consumer would purchase products from Vision Direct, instead of from 1-800 Contacts."

    Vision Direct's bad luck continued when the court ruled that 1-800 had also established a likelihood of success on its cybersquatting claim. The court found that Vision Direct clearly acted with the "bad faith" required for liability under the statute. Vision Direct has no trademark right in the domain name, nor did it demonstrate any prior bona fide use of the domain name.

    According to the court, the fact that Vision Direct and plaintiff are competitors alone tends to show that Vision Direct registered the www.www1800Contacts.com domain name with the "intent to divert consumers from the mark owner's online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement of the site."

    In granting the injunction, the court determined that under the ACPA, irreparable harm may be caused by the improper registration itself.