google-adwords-square-logoThis post is somewhat of a rhetorical question, but I have always found interesting those situations where a Complainant files a UDRP action against a Respondent who has a portal site at the domain which contains links related to the Complainant’s trademark, including links that the Complainant paid to have put there.  Let me explain this more fully.

A third party infringer registers a domain like www.walmartstores.com (even though they are not affiliated with or part of Walmart), and then signs up with Google AdWords to make some money off the site by having links posted on the site which users will then (hopefully) click on – thereby generating “click-through” fees for the third party.  The links from AdWords which are posted on the site likely relate to the world of Walmart and other similar-type wholesale stores (due to having the term “walmart” in the domain name) such as Costco or Sam’s Club.  There may even be a link or two which Walmart itself has paid to have put there.

How could this happen? Well, if Walmart is also a customer of AdWords, then it is paying Google to distribute Walmart links all over the internet, including third-party sites that AdWords believes relate to Walmart and its products/services.  Thus, Walmart is paying Google to advertise its business on the infringing www.walmartstores.com site and have users click on Walmart’s own advertising and go to Walmart’s webpage.  Thus, in its present form, Walmart is opting in to an advertising program where it has no control over where links to its site may appear.

If the third party infringer in this hypothetical case can show that a link on it’s portal site was actually put there by Walmart, and therefore that Walmart is actually paying Google to do this for them, should that mitigate Walmart’s ability to recoup or cancel that domain?  If the argument is that the Respondent has acted in bad faith by trying to gain financial benefit from click-through fees on the portal site that relates to the trademarked property, should it also undercut that argument if the Complainant actually engaged an agent (Google AdWords) to direct its advertising to the site?  How can there be bad faith if the Complainant is, in effect, facilitating the infringement?

It goes without saying that the third party here is gaming the system – knowingly registering a domain that it knows will attract certain types of recognized advertising that users will hopefully click on when they go the site – but even so, the value of generating click-through fees does not exist without companies paying into that same system.

Although I have never heard of or seen anyone argue this point, I wonder if anyone else has seen it discussed in a decision?  Google’s advertising program is lending value to the domain by posting advertising affiliated with the name – does it have some responsibility therefore to try and filter out sites that are just leaches on its system?

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