AOL, rather than fixating on building business and staying relevant post Time-Warner, is suing search and display platform provider Advertise.com for trademark infringement and unfair competition. Furthermore, the company is also partly responsible for the near-done sale of the domain name Ad.com for a reported $1.4 million falling through, leading to the seller of the domain name subsequently suing the buying party, says DomainNameWire.
But first lawsuits first.
Advertise.com, which was purchased by ABCsearch.com earlier this year and rebranded as such a few months ago, is a variation on AOL-owned Advertising.com, the beleaguered Internet company claims. In legalese, that translates as follows:
“Advertise.com recently commenced use of the virtually identical and confusingly similar designation Advertise.com and design in connection with the same and complimentary services as those offered by Plaintiffs under their federally-registered Advertising.com name and marks and their Ad.com name and marks.”
Update: looks like Advertise.com sued AOL first (August 17, 2009)
A search of the USPTO database shows that AOL does in fact have three registered trademarks for Advertising.com, but all are design trademarks, which means they stand little chance of exercising trademark rights over something as generic as the domain name advertise.com. Granted, the logo looks vaguely similar, but ‘virtually identical and confusing’ it ain’t.
Note that AOL doesn’t even effectively market Advertising.com as a business unit anymore – although it may soon recommence doing just that – and redirects the domain name to its Platform-A website instead (AOL rebranded it to the name of this whole-owned subsidiary in April last year and now prefers AOL Advertising as the overarching denominator).
So why would anyone confuse Advertise.com for an AOL property? It just doesn’t make any sense to try and claim ownership over any domain name with a variation on the word ‘advertising’ in it. What’s next? Ads.com? Advertisement.com? In the court documents, embedded below, AOL even boasts the fact that Advertise.com has only about 25,000 unique visitors per month, so what’s really at stake here?
The second case is even more bizarre: although often used in its communication, Ad.com is apparently not a trademark owned by AOL, although the company has filed an application for it in the past. But that domain name is actually owned by a Marcos Guillen, who recently sold it to Directi and Skenzo for $1.4 million. Well, almost sold it, because the deal fell through after all, according to industry watchers due to the fact that the mark has not yet acquired distinctiveness for any of the applicants – including AOL – following a recent examination. Guillen has now filed a lawsuit against Directi and Skenzo for backing out of its auction purchase of Ad.com, seeking $1.4 million, prejudgment interest, and/or damages according to proof.
Advertise.com sued AOL first http://dockets....case_id-451754/
This turn of events is very interesting.
“AOL, rather than fixating on building business and staying relevant post Time-Warner, is suing search and display platform provider Advertise.com for trademark infringement and unfair competition.”
Yes, because a company as large as AOL couldn’t possibly do two things at once.
Well, of course they can, but I’d go for the productive activities.
AOL still SUX! nothing will change, these guys and Ted brought us 100’s of millions of CD’s and a version of AOL that would not let your WIN9X computer ever get on the internet with another provider ever again. Yes an AOL virus no less…
nothing will change, AOL has been the scourge of the Internet since they’ve ever been..
Only giving access to a filtered POSIweb, you may as well have moved to china when you joined AOL..
when are they going to just bug off and die off for once?
non-contributing leeches~!
their all just a bunch of squatters.
AdvertiseLocal.com-sell yourself
ShitLocator.com – download 2 girls 1 cup complete video for free…..
Says the man who squats thousands of domains for nothing…
OMG locator guy, is that you? i kinda missed your witty comments!! how’s the location business going?
Don’t quit your day job…
thanks M. a little wit can go a long way. the LBS business has never looked better. the offenderlocator @ #4 iphone apps was pretty exciting. “Locator” terminolgy will rapidly surpass “Search” for mobile content discovery. Mobile apps like McLocator, KFClocator, BKLocator are just the tip of an iceberg. “Mobile natural language locator app standards are being set.” Corporate developers that create these natural language locator apps know what they’re doing……they get it.
What about dumblocator or idiotlocator? That could be a riot! loserlocator is another good one!
The minute I saw the name change to Advertise.com I knew they were going to get sued.
Sorry buts it just too close in name to Advertising.com and even as an industry insider I was a little confused. They knew exactly what they were infringing upon too, i think the first time I saw them was at a trade show – their logo was similar and the color scheme was similar. WTF were these people thinking?
AOL’s law firm has been very aggressive pursuing domain names. They came after one of my domain names a few months ago with a very weak legal argument.
Could there be a more descriptive, and dare I say generic name for a website related to advertising? I don’t see how this first suit gets past the pleadings, much less summary judgment. Totally ridiculous.
Locator thinks he owns the best collection advertising domains ever collected.
When you cant compete because you suck to holy high hell, the alternative must be to sue. AOL does, and always has, sucked.
Frivolous?
Hey quit dissing AOL! *sharks* have to eat too!
AOL is the best thing to ever happen to the internet. Wait, what’s AOL?
I has domains for sale lawsuitlocator.com
This is just asking for confusion. We advise our clients away from going with generic keyword domains for this very reason. Domain name conflicts only become more common the more desperate people become for a readable, spellable, memorable domain name. We wrote a blog about tips to avoid these problems http://www.bran...-name-conflicts but I think in this case they ran willingly and knowingly into the bull fight.
BrandBucket … as a trademark lawyer, it sounds like good advice to your clients … fanciful (or at least arbitrary) domains are prudent to avoid possible trademark issues. Equally important would be to seek trademark counsel for a trademark-clearance assessment of even those domains that are seemingly unique, as they still could pose trademark concerns under the “likelihood of confusion” or “dilution” analysis.
Very interesting case. The key here is consumer confusion. On the one hand, you can’t trademark a generic name like advertising or advertise. The fact that it is a domain name does not make it any more protect-able. On the other hand, AOL may be able to show that as a result of years of use and investment, the current usage of advertise.com can confuse consumers as to the source of the service. That can get them some protection against continued confusion, even if it is a relatively weak protection. As an Internet Lawyer I see this type of trademark questions all the time. Not being able to register a mark, does not mean you do not have a protected right in it under common law.
WTF!?!
this is a flabbergastingly disgusting move by AOL!
no, .. seriously.. can’t I register AD.mu or ADVERTISE.mu or ADVERTISING.mu as well?? would that too be confusingly similar.. or AD.cm or ADVERTISE.cm
time to put America On Line OFFLINE imho!
domaining related lawsuits is getting out of hands..
can the owner of ONLINE.COM please sue them since this is very confusingly similar to America Online!
This is what all of you get for crying fowl on cyber-squatting. You’ve given the power to big corporations, instead of protecting yourselfs. Is cybersquatting that big of a deal compared to reverse domain hi-jacking. Something that has happened to LH.COM, ROCKY.COM, and hundreds of other generic domains.
Time to re-think your arguments now that the corporations are showing their true colors, and greed.
As a trademark lawyer, it’s an interesting case particularly given the recent treatment of domains by the United States Patent and Trademark Office (USPTO). Wonder whether a Uniform Domain-Name Dispute-Resolution Policy (UDRP) proceeding before the World Intellectual Property Association (WIPO) or the National Arbitration Forum (NAF) wouldn’t be the right approach?
Well, there is merit to what AOL is doing. You would too if you were AOL.
Wouldn’t google do the same if one squatted on gogle.com? try that domain and see where it takes you.