In its lawsuit filed against Advertise.com today in federal court, AOL demanded not only damages, but also for the court to order advertise.com, to change its company name and stop using the term advertise.com
The suit asks the court to grant to AOL:
“””A. Preliminarily and permanently enjoining and restraining Advertise.com, and all entities under its control, as well as its parents, subsidiaries, licensees, owners, directors, officers, partners, assigns, related entities, predecessors, successors, employees, representatives, trustees, receivers, agents, and any other persons or entities acting on behalf of Advertise.com or with Advertise.com’s authority, from:
(1) using, selling, offering for sale, holding for sale, advertising or promoting any goods or services under or in connection with any trade name, trademark, service mark, Internet domain name or other designation of origin that is comprised in whole or in part of the ADVERTISE.COM Designation, the ADVERTISING.COM and AD.COM Marks, or any terms, designs or styles confusingly similar thereto; or
(2) doing any act or thing that is likely to induce the belief that Advertise.com’s services, or activities are in some way connected with Plaintiffs and/or Plaintiffs’ business, or that is likely to injure or damage Plaintiffs or their ADVERTISING.COM and AD.COM Marks; and
B. Ordering Advertise.com to:
(1) pay Plaintiffs the compensatory damages sustained by Plaintiffs as a result of the unlawful acts alleged herein and that such damages be trebled pursuant to 15 U.S.C. § 1117 because ofthe willful and unlawful acts alleged herein;
(2) pay Plaintiffs punitive damages as a consequence of the willful and wanton acts alleged herein;
(3) account for and pay over all gains, profits and advantages derived but it from the unlawful acts alleged herein and/or as a result of unjust enrichment;
(4) deliver up for destruction all materials that bear the infringing ADVERTISE.COM Designation, including without limitation all letterhead, signage, brochures, labels, stickers, trade show displays and materials written materials and other promotional materials;
(5) reimburse Plaintiffs for the costs they have incurred In bringing this action together with their reasonable attorneys’ fees and disbursements;
(6) pay Plaintiffs’ costs of corrective advertising;
(7) change its corporate and legal name to one that does not incorporate the term ADVERTISE.COM, ADVERTISING.COM, AD.COM or any terms confusingly similar thereto;
Your reading it right.
AOL is asking the court to make the company that owns advertise.com to change its legal company name and stop using advertise.com.
Wow
“change its corporate and legal name to one that does not incorporate the term ADVERTISE.COM, ADVERTISING.COM, AD.COM or any terms confusingly similar thereto”
So…obviously, clearly, certainly Ad.com will be next.
After all AOL “owns” Ad.com even if they don’t own the domain.
Shameful.
And who is next? Ads.com, Advertisement.com, Advertisements.com, Advertises.com…
This is crazy. Somebody call TimeWarner, AOL is off meds again
AOLsucks.com
Of COURSE they are demanding this! This is obviously a trademark violation. Advertise.com used to be named abc Search…maybe abc Search should have done their homework before changing their name! So if abc Search even has a legal department…I’m guessing they will all be fired since they are about to cost that company major $$$.
Not to mention they made their “A” in Advertise.com almost exactly like Advertising.com’s logo that has been around for years. Check it out…
I said it at DNW and I’ll say it here too
This is some of the craziest s#!t I’ve ever heard.
Think of it this way…if an electonics company called 123 Electronics changed their name to Samsong…they’d probably get sued by Samsung.
If a pharma company called ABC Pharma changed their name to Fizer or Phizera, they’d probably get sued by Phizer
If an MP3 company called MP3 Deluxe changed their name to Apples then they’d probably get sued by Apple.
Its fine to compete, but get a name that doesn’t confuse end users. Especially when the incumbant has invested billions in their pre-existing brand.
Isn’t the father of ABC Search CEO a notorious cyber-squatter with tons of UDRPs?
When corporations can put a fence around a common word predating the corporation humanity is deprived of language.
jmb you neeed to see one important different: advertising, advertise = generic words for advertising. So it is fair use to use advertise.com or ad.com also for advertising. Different would be if there would be a brand of clothing called “Advertising”. In that case to make a new line of clothing called “Advertise” would be TM abuse. This is not.
These are creation dates of domains, advertising.com has been regged as LATEST, now this might not play a role in WIPO, because they are biased morons, but independent court should think different
advertise.com 8/29/1994
ad.com 8/14/1997
advertising.com 6/8/1998
And advertise.com has sued AOL in a California court:
http://dockets.justia.com/docket/court-cacdce/case_no-2:2009cv05983/case_id-451754/
It was actually filed the day before AOL sued Advertise.com. A nice week to be a lawyer!
You still have TM rights to a degree even without a TM. Common law, if you’re known in the industry as one thing a competitor offering similar services cannot come in with a confusingly similar name. This is to protect the end-users from being confused or tricked as well as protecting the original brand owner from having their brand dilluted. I’d sue someone if I had invested over $1 billion in a brand versus a guy that bought a domain for $600K without doing a trademark review with their attorney.
“I’d sue someone if I had invested over $1 billion in a brand”
If I would have invested 1B in a brand for a domain I do not own and when I could buy the domain for 1.5M I would not and decided to litigate with costs higher than 1.5M I would feel like n idiot. But hey that’s just me, you are clearly different…
In Italian, they call this “chutzpah”. AOL has always been known as AOL; not Ad.com or Advertise.com or Advertising.com. The defendants need to file a Rule 11 Motion against them as this is one of the most groundless cases I have seen.
–In Italian, they call this “chutzpah”–
Hm I always thought that it is a Yiddish word…
D
Howard was joking, believe me Howard knows what chutzpah is
Oh
Must be Jewish humour 🙂
@jmb – “I’d sue someone if I had invested over $1 billion in a brand”
AD.COM is not their “brand”. They have zero rights to the domain so the entire premise is without merit. No more than wishful thinking and abuse of available processes.
“You’ve Got Mail! ” ……remember that?
They claimed ownership to those words and lost in court because it was so generic. This was in something like 1997.
I guess now it’s ” You’ve got lawsuits! “.
… and AOL will lose this baseless, groundless suit as well.
Reminds me of all the legal actions over the years that the parent co of Entrepreneur Mag has taken against those who “dare” use the generic word “Entrepreneur.”
Ridiculous.
“I guess now it’s ” You’ve got lawsuits! “.”
LOL
—-
“… and AOL will lose this baseless, groundless suit as well.”
Hopefully it won’t even get that far and the court refuses to hear the case.
Pat
I do think the court will hear the case.
I still do not think these cases are as baseless and most of you feel
“I do think the court will hear the case.
I still do not think these cases are as baseless (as) most of you feel”
Mike,
Okay , you think the case will be heard.
But do you really think this case should be heard?
After seeing this situation arise I think it is a good thing Hotels.com
was not granted a TM.
I’d hate to see a trademarked Hotels.com go on a frenzy and go after
Hotel.com, Hotels.us, etc.
I’m not saying they would but after this AOL lawsuit, you never know.
Pat
This is a different case.
Hotels.com appealed the decision of the board not to grants its application for trademark.
In this case, AOL is alleging trademark infringement of a registered mark as just one of their claims.
AOL is also claiming common law trademark rights.
AOL is also claiming infringement on its logo by advertise.com as being too similar to advertising.com logo.
AOL is also making a claim based on unfair competition under Virgina state law.
All I’m saying is in both this and the ad.com, case you simply dismiss the actions by saying the trademark is too generic to protect.
“and the ad.com, case”
Okay Mike,
I got it.
What gets my gall is AOL’s seeming claim to Ad.com which is a domain
you know they never owned and only have rights to in their own imagination and grandiosity.
Regarding Advertise.com, AOL isn’t just saying stop copying our logo but
to stop all advertising related activities including any domain containing
the word “advertise” or”ad”.
It’s absurd.
It’s just as absurd as if the the owner of “Domains.com” had a real site and
sued you for infringing on his mark by simply using the article “The” before Domains even though you are offering up a personal blog on domaining.
Anyway we’ll see what happens I suppose.
Is it true you are a big AOL shareholder?
Just kidding. 🙂
One last thing that I forgot.
If AOL should prevail…
then there is no God…
and the Terrorists have won. 🙂
Patrick, go read trademark law for dummies. That’s a good start.
This is a good opportunity for the industry to know the fine line. Talk to any trademark attorney or branding specialist and they’ll tell you the same. But what else would you expect from a domain industry forum?
Whether it was AOL protecting their space or another company, it was only a matter of time before it reached a boiling point and brand owners began to flex. Point blank, especially for millions, buyers and sellers need to do their dilligence instead of making splashy sales and hyping up the next auction at some swank hotel with open bars and caviar.
If you think this is serious business then treat it that way. Its that simple.
@MHB – “I do think the court will hear the case. I still do not think these cases are as baseless and most of you feel.”
Mike, suffice it to say I have grown to respect your opinion. Heck, I read your blog everyday! Now that’s a tribute. 🙂
But I can’t get a read on where you are coming from. I’m genuinely confused, and surprised. You seem to be suggesting there is a true case for AOL to lay claim to AD.COM. What am I missing?
You being a domainer with experience in the finite boundaries of trademark and domain registration rights, I would have imagined you royally pissed at AOL, but also clearly recognizing the baseless overeaching that they are engaging in. Thanks for clearing up my cognitive dissonance!
Advertise.com beat AOL to the punch and filed their own suit a day before AOL filed theirs…
The C/D letter from AOL’s attorney is an interesting read as well… he DOES indeed claim that AOL owns and operates not only the Advertising.com name and mark but also the AD.COM name and mark. Advertise.com has some fun in pointing out to the court the fallacious nature of that claim and states quite clearly that AOL has never owned that domain.
If these marks were not so blatantly descriptive at best, I could see the efforts of AOL possibly paying off… They are throwing everything but the kitchen sink at this, hoping something sticks. I think this is likely why MHB is not so quick to dismiss the threat, too. I also think we’ll see AOL getting beat up over it in the end. I certainly hope so, as the ramifications of anything but would be chilling.
You know, sometimes I forget how immersed in this stuff we are day after day. Even the NAF and WIPO panelists (fringe players) often barely know what they’re doing, so its actually not a stretch for some AOL exec or general counsel to “think” they have a case. This case suggests to me either they haven’t familiarized themselves with the limits of trademark law, or they know it’s a shot-in-the-dark and just hope they’ll get lucky. Probably the latter.
In this case, the level of indignance about this action likely points to the future verdict.
I agree with Cartoonz about the staggering ramifications if AOL could steal AD.COM. Such a decison would undermine internet business, and even affect the larger business world. Would become a damaging & de-stabilizing precedent opening up all kinds of lawsuits and abuses between companies, industries, and website owners. In other words, legal system would crumble. All out chaos.
AOL isn’t going after ad.com. Why do you keep saying that???
It is very clear that AOL filed suit against ADVERTISE.COM.They are not after AD.COM. Marcos Gullien filed suit against Skenzo for AD.COM. It think that’s pretty clear.
But, you might be getting them all mixed up, which happens a lot in the ad industry, which is the point of the case.
Now if ad.com started a site offering display networks or behavioral targeting to publishers and advertisers then a suit similar to Advertise.com could possibly happen I suppose.
Max
“But I can’t get a read on where you are coming from. I’m genuinely confused, and surprised. You seem to be suggesting there is a true case for AOL to lay claim to AD.COM. What am I missing?””
Max I respect you as well so let’s backup and let me try to explain where I’m coming from on this.
First we have to cases in play.
The owner of ad.com suing Skenzo over the failed sale of ad.com based on AOL assertion of some claim of right to ad.com
Second we have AOL and advertise.com suing each other (but really AOL suing advertise.com) for several issues, including trademark infringement, and unfair competition.
So first these are two separate cases.
Next regarding the ad.com case since that is what your asking about:
First, when Andrew broke the story on ad.com, his take on it if you will, was that AOL claim was based on a failed trademark for ad.com.
The domain community’s reaction was basically that AOL had no claim, the buyer should have just went ahead and bought the domain for $1.4 Million, spent a month fighting AOL and gotten the case thrown out.
So that’s the background.
Now my point was understanding what AOL claim was, which I went through in the original post on that dispute.
I’m not saying AOL should win.
I’m saying that AOL does have a viable issue.
Not based on the failed trademark application for ad.com, but on a common law trademark right based on AOL usage of the term ad.com and more importantly that major media outlets having been referring to AOL product as ad.com for years.
Read the articles I posted as examples in my initial post.
Business Week
Media Week
This is not “sams blog” calling AOL’s product ad.com.
Serious publications referring to AOL’s product as ad.com.
For years.
So its my point that this is not a slam dunk case that’s going to end on the first motion.
This is a case which has the potential to have cost the buyer more in legal fees than the $1.4 Million it would have paid for the domain.
Even if the buyer prevailed against AOL it would not recoup its fees.
That is the unfortunately reality of the legal system here in the states.
Finally any law firm looking at this case would tell their client they had a chance of losing, after spending the $1.4M to buy the domain and maybe millions more defending the action.
Will AOL win?
I certainly hope not.
But we don’t know all the facts yet but they have a chance.
Hope this clears it up
This is oficially a 3 ring circus.
Funny how all aol had to do was buy the worst of the 3 domains to entitle themselves to the other 2. What crooks. Aol has always been crooks, feeding of the week and uninformed, charging $20 a month on top of the isp’s charges to people who think the Internet won’t work without aol.
“Not based on the failed trademark application for ad.com, but on a common law trademark right based on AOL usage of the term ad.com and more importantly that major media outlets having been referring to AOL product as ad.com for years.”
Mike , this is how I see it and is the crux of the problem regarding
Ad.com. :IMHO:
In every instance Ad.com was used by the media and internally by
AOL people, it was never used to refer to the actual domain entity
Ad.com but as an abbreviation for Advertising.com.
Ad.com was an abbreviation in speech of a longer term.
That’s all.
How does using an abbreviation now translate into staking a claim on the
actual domain entity?
I’ll dare say not a single member of the general public not involved in
advertising would associate Ad.com with AOL.
The came can be said for Advertise.com and even AOL’s own Advertising.com.
Pat
You are asking the right question: “can someone can gain a common law mark, by usage and media acceptance and usage; this is what the court will have to decide.
My point is this is not an issue that’s going to be resolved on one motion, easily or cheaply.
The advertise.com case is different.
There AOL has additional claims, including a very similar looking logo, a business engaged in the same business that advertising.com is and Virgina state law claims of unfair competition.
The seller of ad.com should have sued aol for infringing on his common law mark of ad.com
“There AOL has additional claims, including a very similar looking logo, a business engaged in the same business that advertising.com is and Virgina state law claims of unfair competition.”
Mike,
The similar logo , etc. aside, I find it very disturbing that AOL wants
Advertising.com to stop “engag(ing) in the same business that advertising.com is”.
Only AOL has the right to engage in the advertising business?
Not on my planet!
By the way I do get your point- it won’t be an easy case.
Patrick
AOL’s action here doesn’t make my day either.
The whole ad.com deal is horrible for the industry.
But I have to give my honest opinion, which is they have a claim and its going to be EXPENSIVE to defend.
“The similar logo , etc. aside, I find it very disturbing that AOL wants
Advertising.com to stop “engag(ing) in the same business that advertising.com is”.”
I think you meant to say “I find it very disturbing that AOL wants
ADVERTISE.COM to stop “engag(ing) in the same business that advertising.com is” See…you’re already confused, proving the point of the lawsuit.
Advertsing.com has been around for quite a while and all in all it’s NOT about domains. This is a branding and trademark issue. So the similar logo and similar business ARE a big deal in the branding and trademarking world.
Any smart company would do what it had to to protect their brand and brand equity. Advertising.com definitely isn’t going anywhere, so I’m sorry…AOL definitely has the right to protect the Advertising.com brand that they own. If I’m wrong, the courts with prove it, but somehow I doubt that.
Hey Mike,
It would be interesting if you put up a Poll for this issue. It seems that alot of people have strong opinions about the issue. It would be interesting to see how many think that AOL is right, Div is right, AbcSearch is right, etc…
Just an idea, take it or leave it
@MHB – First, thanks Mike for indulging my questions and providing the elaboration. This case is both disgusting and fascinating at the same time.
The thing that defies logic for me is AOL nonchalantly referring to their business as ad.com when they didn’t own the domain. They set out on a losing course when they allowed this misrepresentation to go on. That a few major media outlets mindlessly joined in can be attributed to lack of professionalism in reporting. In my opinion, it adds no substantive credence to AOL’s claim.
My assessment is that there is an extremely important principle of law at stake … built around the importance of honest and accurate representations by companies in the greater marketplace. If AOL began referring to their advertising.com as “ad.com”, then they are actually contributing to their own loss of brand protection.
Any intentional use by AOL of “ad.com” does not strengthen their claim, but actually dilutes and weakens the brand equity they obviously purchased in Advertise.com. That AOL intentionally referred to their advertise.com as “ad.com” will be regarded as evidence of willful misrepresentation, all while knowing they did not own the domain ad.com.
When AOL lose, this will be another huge win for the integrity of trademark law and a massive win for domainers. Trademark boundaries and distinctions have carefully evolved over many years, and have effectively protected both consumers and the integrity of the larger marketplace. AOL basically ignored all common sense and in a pure example of grandiosity at work, violated the very protections designed to preserve their own brand.
Gosh, sorry again. I just can’t shut up. This is stimulating to think about. I suspect we will witness a new ahole drilled into AOL if this makes it Federal court. And I highly suspect this case will not get there.
P.S. Please forgive my constant back and forth confusion of Advertise.com and Advertising.com. I’m double dyslexic.
“P.S. Please forgive my constant back and forth confusion of Advertise.com and Advertising.com”
Yes because we’re typing fast (I can’t type)
and not proof-reading.
But no one is mistaking Ad.com for either
Advertising.com or Advertise.com
…except AO. 🙂
…except AOL.
Your confusion of advertising.com and advertise.com over and over and over in these comment proves the case.
But throw in the logos and offerings on the sites…
Well, you can see why this case exists.
If someone get confused, goes to the wrong site, and a million dollar ad deal ends up going to the wrong company by accident….that’s what trademark law is about. Can’t confuse the end user, period.
Max
OK so now I think we are close to being in agreement on my original post which to point out this is a complicated mess of a case, that going to take time and money to resolve.
However, I believe all parties involved have made the “smart” decision, as to what they should have done at this point.
With Div’s actual knowledge of AOL claim to ad.com and under threat of lawsuit by AOL, he made a business decision not to spend $1.4M on the name and face legal fees which would have been well into the six figures and probably would have been more than the purchase price of the domain.
I believe that was the correct business decision.
The Seller I believe went to the second highest bidder on Ad.com and they apparently said no, based on AOL claim.
The Seller sued the buyer for breach of contract, rather than filing suit against AOL, and I believe that was the Seller’s best business decision.
That was the smart thing for the Seller to do.
Much cheaper to sue Skezno for breach of contract than AOL for the tortuous interference with a contract.
Oversee did the right thing buy suing the buyer for its commission.
All parties have taken the smart business road based on where they find themselves at this point.
The bad news is AOL claim to ad.com (not advertise.com) may or may not get ruled on in this case. Unless one of the parties brings AOL into the ad.com case, they are out.
If AOL is out, I’m not sure the validity of AOL claim is at issue and the case between the Seller and Skezno will be decided on the basis on more traditional contract issues and how knew what when.
Stay tuned.