In the EU courts in Luxembourg, there is currently a court battle being waged between  Google and Louis Vuitton over Google’s  sale of trademarked keywords in its online AdWords search ads.

LVMH Moet Hennessy Louis Vuitton SA maintains that Google has no right to “sell” keywords that are trademarked by the group.  (The original case started in 2008 and was appealed by Google)

In the latest news about the case, the European Advocate General issued an opinion on Sept 22nd advising that its anticipated ruling will allow the continued sale of trademarked keywords by Google AdWords.

The main reason behind the finding in Google’s favour was the fact that the use of trademarked keywords in search does not constitute the sale of services or goods that complete with the original trademarked items. To quote:

“Since the use by Google does not involve identical or similar goods or services, in principle there can be no risk of confusion on the part of the consumers.”

The ruling in Google’s favour represents a major win for Google. The AdWords engine has been enforcing the use of trademarked keywords in advert copy. This has lead to frustrating delays for advertisers because any ads containing trademarked words had to be editorially cleared, before being flighted.

Domain Names

A question that arises from the descion is this: Can this ruling be applied to domain names that make use of trademarked keywords?

This commonly happens when a domain name containing a trademarked keyword is purchased by an entity other than the trademark owner. Suppose that the domain owner does not use the domain name to sell “involve identical or similar goods or services”, does this now mean that the trademark owners have no claim on the domain name?

Thus a domain name, which has high value as a keyword in Google’s search algorithm, is in fact doing the same function as an AdWords keyword? Is there in fact a difference selling a keyword that is part of a domain name as opposed to selling that same keyword as part of a searched advertising phrase?
 

Howard Rybko -Sep 23 2009