In a fascinating recent UDRP decision a WIPO panel denied a complaint filed by Samsung over the domain name  The case is noteworthy mostly because of the reasoning provided by the Panel concerning “bad faith” activities and the Respondent’s use of the Google AdSense program to generate advertising fees.

The facts of the case were straightforward. Respondent was using the domain to run what was described by the Panel as a “fan” website reporting on Samsung products/programs.  There was some advertising on the page that was generated by the Google AdSense program, advertising that was at some points directed toward competitors of Samsung and their electronics products.  It is usually the case that the appearance of this type of advertising is a basis for finding “bad faith” under UDRP law. See WIPO Overview 2.0 sec. 3.8 – “Can third party or ‘automatically’ generated material appearing on a website form a basis for finding bad faith?

The panel however took a different perspective on this and reasoned that the type of advertising generated through a third-party platform like Google AdSense is not necessarily indicative of bad faith because the Respondent is not controlling the ads that are generated. They said:

“The Complainant attempts to attribute bad faith to the Respondent by reason of the fact that the advertisements on the Respondent’s Website refer to other companies, which may or may not be competitors of the Complainant. There is no evidence in the record that casts doubt on the Respondent’s claim that the advertising links are sent automatically by a third-party (Google) advertising feed provider using keyword search techniques rather than human selection. The automated advertising feed arrangements are such that it cannot be assumed that the Respondent requested such links or was even aware of them before receiving notice of this dispute. In the face of the Respondent’s denials and the automated nature of the advertising links, the Panel considers the existence of any particular advertisement insufficient to prove the Respondent’s intent to mislead Internet users by the registration and use of the Domain Name itself.” (emphasis added)

It is interesting that there are no supporting citations from other arbitration decisions in the case, and no mention that often third party advertising programs are used specifically to take advantage of the trademark in the domain name. In fact, the value of registering a domain name that includes a trademark is usually tied to the mark’s ability to attract users who are looking for information related to the mark.

For example, the domain name directs to a parking page that lists links to Macy’s Inc. stores/products. The value of the domain/site is ts ability to attract users looking for Macy’s Inc. There is no doubt that the site uses a third party ad program to automatically populate it with links/ads that the registrant does not control. Should this obviate liability if the registrant purchased the domain with the goal of taking advantage of the Macy’s name and brand recognition, which he/she knew would be populated by related links/ads? In most cases (as cited above) the answer has been “no.”

In the “Fact” section of the decision the Panel discusses the functionality of the Google AdSense program and that it is based on the human users search history:

“The Respondent uses the Google AdSense program which works by displaying targeted ads using Google’s proprietary technology, over which the Respondent has limited control. The ads shown on the Respondent’s Website are based on the keywords AdSense advertisers bid on with Google. The website administrator has no contact with the advertisers advertising via the Google AdSense program.” (emphasis added)

However, the panel failed to truly understand the nature of Google’s AdSense program. In this case, by running a Samsung related site, and providing Samsung related content, the site was participating in Google’s Display Network:

What AdSense does is not only use the user’s browsing history, but also chooses ads by analyzing the content displayed on the website. By running “SammyHub” and covering Samsung related products/services, the site will naturally cause Google to display ads for Samsung products as well as competitor products. This is done to maximize the site owner’s revenue, and is absolutely done by trading on the value of Samsung’s brand recognition. 

The decision creates what should be citable support for any party faced with a UDRP over a domain that includes a trademarked property and links/ads run by a third party program like Google AdSense. The panel however does not appear to have understood the full implications of what the Google AdSense technology is doing and that any domain name that includes a trademark and content related to the mark is naturally going to have related display ads. If there is a distinction to be made amongst different third party advertising platforms and how they work, future panels will have to provide more detailed reasoning and a sounder basis for taking responsibility out of the hands of the registrant for ads/links that are posted on a site for a domain name that includes a known mark.    ..