No rescue for 'keying' complaint against Google

In Rescuecom Corp v Google Inc F Supp 2d, 2006 WL 2811711, 2006 US Dist LEXIS 70409 NDNY, September 28 2006, a federal district court in New York State has found that Google Inc did not make trademark use of Rescuecom Corp's mark when it sold to Rescuecom's competitors the right to have their advertisements, or sponsored links, delivered in search results when consumers entered the mark as a search term or keyword. The court emphasized that, according to Rescuecom's allegation, the trademark did not appear in the text of the competitors' advertisements delivered by Google; rather, Google used the trademark internally in determining whether an advertisement should be delivered.

The case came before the court on Google's motion to dismiss the complaint for failure to state a claim on which relief can be granted. In such motions, the court accepts as true the plaintiff's allegations, and determines whether a claim is viable even if the plaintiff proves all of the allegations. Rescuecom is a computer services franchising business. Its franchisees offer repair, consulting, networking and internet services. It operates a website at the domain name 'rescuecom.com', and conducts a substantial amount of its business over the Internet, claiming up to 30,000 visitors to its site each month. Many of Rescuecom's competitors advertise their services over the Internet and participate in Google's keyword advertising programme. Rescuecom alleged that Google used a 'Keyword Suggestion Tool' to recommend 'rescuecom' to the competitors as a keyword, with the result that consumers who entered 'rescuecom' as a keyword saw the competitors' advertisements.

Google moved to dismiss the complaint, arguing that its sale of 'rescuecom' as a keyword is not a trademark use under federal or state law, precluding Rescuecom from proving trademark infringement, dilution or false designation of origin under federal law, or infringement or dilution under state law. The court noted that technical trademark use is a threshold requirement, and the absence of such use is fatal to a trademark claim even where there is evidence supporting a likelihood of confusion.

Rescuecom argued that Google's sale of 'rescuecom' as a keyword that triggered competitors' advertisements was trademark use for the following four reasons, each of which the court rejected:

• Rescuecom argued that Google was "free-riding" on the goodwill associated with Rescuecom and causing confusion. Google allegedly earned revenue by selling the 'rescuecom' keyword, it caused competitors to believe it had the right to sell the 'rescuecom' keyword, and consumers entering 'rescuecom' as a search term were confused as to whether the competitors' advertisements belonged to or emanated from Rescuecom. The court held that none of these allegations, even if true, establish trademark use.
  
  
• Rescuecom also contended that Google's delivery of competitor advertisements prevented consumers from reaching Rescuecom's website, because a consumer who clicks on a competitor's advertisement cannot access Rescuecom's website simultaneously. The court commented that, unlike typing in a trademark as a domain name, which leads directly to a website, typing a trademark into a search engine as a search term or keyword leads to a page showing advertisements and relevant search results, including a link to Rescuecom's website. The court also emphasized that Rescuecom failed to allege either that any of the links among the search results, other than Rescuecom's, displayed the Rescuecom trademark, or that Google's actions affected the appearance or functionality of Rescuecom's website.
  
  
• Rescuecom alleged that Google's sale of the 'rescuecom' keyword altered search results received by consumers who enter that search term, diverting and misdirecting consumers away from the Rescuecom website. The court rejected this argument, again relying on Rescuecom's failure to allege that Rescuecom's trademark is displayed in any of the competitor sponsored links, or that the link to Rescuecom's website was prevented from appearing on the search results page. The court observed that a consumer may still click to Rescuecom's website, even though he may have other choices.
  
  
• Rescuecom argued that Google's internal use of 'rescuecom' to trigger the appearance of competitors' advertisements was trademark use. The court disagreed, finding "no allegation that [Google] places [Rescuecom]'s trademark on any goods, containers, displays, or advertisements, or that [Google's] internal use is visible to the public".

Based on the absence of trademark use, the court also dismissed Rescuecom's dilution claims.

David S Fleming, Brinks Hofer Gilson & Lione, Chicago