Resuecom files trademark suit against Google

CNY Business Journal (1996+), Sep 17, 2004 by Dickinson, Casey J

SYRACUSE - Rescuecom, a computer-repair franchising company based in Syracuse, has filed suit against Google, Inc. to stop the search-engine giant from selling the company's name as a Google keyword

Filed in the Northern District of New York Sept. 8, the complaint alleges that Google infringes on and dilutes Rescuecom's trademark by selling it as a keyword. Google has a program called "Ad Words" where advertisers can bid to place their advertising on the results page when a certain word or word combination is searched. The advertisers pay several cents per search to have their ads associated with certain keywords.

Rescuecom, which spells its trademark using all capital letters, is a Google Ad Words client. Typing "Rescuecom" into the Google search box brings up www.rescuecom.com as the top search result and www.rescuecomm.net as the top "sponsored link." However, some of Rescuecom's competitors, such as Computer Troubleshooters have also purchased "Rescuecom" as a keyword.

"By filing this suit, we hope to prevent Google from using the trademarked RESCUECOM name to advertise our competitors' goods and services," says David Milman, chief executive officer of Rescuecom Corp. "Their current programming not only infringes upon our trademark status, but also confuses the consumer when competitor advertisements appear when the term 'RESCUECOM' is searched."

Milman considers Google's keyword program to be an unfair use of intellectual property when it uses company names as search keywords that could send business to its competitors.

Google says its keywords program is legal and helps searchers get the most information.

"Google's advertising program gives consumers greater access to information, and we believe our trademark policy complies with the law. We believe this suit is without merit and will defend against it vigorously," says Google spokesman Steve Langdon.

The complaint alleges that Google profits when searchers choose a rival's link after searching for Rescuecom. Rescuecom had complained to Google about the use of its name in the past and the search-engine company had removed sponsored links that used the Rescuecom name, the complaint charges. However, a policy change at Google in April 2004 stopped the practice of removing the offending sponsored links.

The complaint has six statutory and common-law causes of action ranging from violation of the federal Lanham Act to a New York State law claim under the General Business Law. Edmund J. Gegan of Syracuse is Rescuecom's attorney.

Rescuecom has asked the court to enjoin Google from using the Rescuecom name in its keyword sales. to provide an accounting of income Google received from the practice, and for money damages of $500 to $100,000 per use of its trademark.

Founded in 1997, Rescuecom has projected 2004 sales of approximately $1 million. The company sells computer-repair franchises that specialize in one-hour, onsite service. There are more than 60 Rescuecom franchises across the nation including New York, New Jersey, California, Texas, and Utah.

Rescuecom's objection isn't the first time that companies have objected to the use of their names on the Internet. Porn site operators have long used popular non-porn terms to drive site traffic. A decade ago, several big-name domains, including mcdonalds.com, were held by others rather than the companies that owned the trademarks.

Subsequent imposition of an international organization, The Internet Corporation for Assigned Names and Numbers (ICANN), provided a forum for trademark disputes over domain names.

The use of company names as keywords is the latest intellectual-property battleground. Earlier this year, Government Employees Insurance Co. (GEICO) brought some not so-great news to Google and Yahoo subsidiary Overture by filing a federal suit in Virginia over keyword use.

Courts and governing bodies have allowed for some noncommercial use of trademark term to promote ideas on the Internet, says Milton Mueller, professor at Syracuse University's School of Information Studies. The distinction that will play out in disputes over commercial trademark keywords will likely involve the advertiser's right to inform consumers vs. the trademark owner's rights, he adds.