Warning: Retargeted Ads a New Way for Trademark Holders to Go After Your Domains

Think your site doesn’t show ads related to a trademark? Think again.

Have you ever noticed a Google Adsense ad that seems to have nothing to do with the context of the page you’re viewing? These are retargeted ads based on your previous web browsing.

These ads may prove to be a new way for trademark owners to claim that your web site was designed to infringe on their marks.

For years, trademark owners have manipulated the results on parked domain names to show ads related to the trademark holder’s field of use. But re-targeted ads might take this tactic up a notch.

Consider this scenario: you operate a web site that includes a generic term in the domain name. The generic term is also a trademark in a limited field of use. But the trademark holder visits your page after visiting web sites in the field of use of the trademark and sees ads related to the field. Thus, the mark holder claims that your domain was created to infringe on its mark.

Sound far fetched? Hardly. In a recent UDRP decision (now the subject of a lawsuit), complainant Vanguard Trademark Holdings USA LLC (which owns the Alamo car rental brand) made this exact argument:

Respondent admits that he is using Google’s AdChoices program in an attempt to generate money from the disputed domain name “alamoclub.com”. Notwithstanding Respondent’s assertion that his website cannot provide links to car rental services, the copy of Respondent’s web page and Google’s own explanation of Google’s AdChoices program shows that it can and will. In this regard, Complainant relies upon the Google website as to what Google envisages about its AdChoices program (See Exhibit 4):

What are AdChoices?

The AdChoices icon appears on sites that use Google’s AdSense program to show ads. While Google often shows you ads based on the content of the page you are viewing, we also show some ads based on the types of websites you visit, view, or where you interact with an ad or other Google product supported by Google’s advertising services. In doing this, Google doesn’t know your name or any other personal information about you. Google simply recognizes the number stored in your browser on the DoubleClick cookie, and shows ads related to the interest and inferred demographic categories associated with that cookie. It’s our goal to make these ads as relevant and useful as possible for you. Google doesn’t create categories, or show ads, based on sensitive topics such as race, religion, sexual orientation, or health.

The ads shown on Respondent’s web page can and will include links to vehicle rental sites that participate in Google’s AdChoices program, particularly if the Internet user has been searching for vehicle rentals.

At least Vanguard admits that this is how the ads showed up on the page.