Retailers shift their ad spending from TV, radio and print ads to digital ads.
When Les Parfums bought “fragrancenet” as a paid search keyword, it figured it was buying a generic term, its attorney says. But it has since consented to a court order to avoid bidding on it so as not to confuse consumers searching for FragranceNet.com.
When Les Parfums Inc. bought “fragrancenet” as a paid search keyword, it figured it was buying a generic term, its attorney says. But in a federal court case last month it consented to a court order to avoid bidding on the term in search marketing efforts so as not to confuse consumers searching for FragranceNet.com.
“We argued that ‘fragrancenet’ is generic, not legally protectable,” says Noah Shube, the New York attorney representing Les Parfums. “I was stunned when my client got sued.”
He contends that Les Parfums, a Los Angeles-based multichannel cosmetics retailer, did nothing unusual in buying keywords to appear among the sponsored Google search ads that appear when consumers search on a term related to another company in its industry.
Hauppauge, NY-based FragranceNet.com Inc., however, contends that Les Parfums went beyond ordinary search marketing tactics in buying keywords related to the FragranceNet web site. “FragranceNet is not the name of a product or brand, it’s the name of my client’s web site,” says Robert Sherman, a New York attorney representing FragranceNet. “If people type FragranceNet into a Google search, they could only be looking for my client’s web site. And if they’re searching for FragranceNet and see links to Les Parfums, they’re being misled.”
Les Parfums, contending it never had any intention of violating any copyrights or trademarks, requested a dismissal of the case, which FragranceNet filed last June in the U.S. District Court for the Eastern District of New York in Central Islip, NY. But the court found that FragranceNet had both a valid trademark and a sound basis for legal action, Sherman says.
FragranceNet.com Inc., No. 158 in the Internet Retailer Top 500 Guide, contended in court that Les Parfums also used the plaintiff’s brand name in metatags built into its web site in order to appear in natural search results when consumers search for FragranceNet. Shube says Les Parfums denies using FragranceNet and related terms in metatags, though the court order enjoined Les Parfums from the use of the FragranceNet name in metatags as well as the purchasing of keywords including FragranceNet, FragranceNet.com and other similar variations of those terms.
Shube adds that Les Parfums never admitted any wrongdoing. Les Parfums operates with several retail business names. In addition to Les Parfums, it operates under the names Les Perfumes Inc., UltraFragrances Inc. and UltraFragrances.com.
FragranceNet is also involved in another ongoing case it filed in the same court against Long Island City, NY-based FragranceX.com. In that case, FragranceNet contends that FragranceX.com has violated copyright and trademark laws, including the use of search marketing keywords.
But FragranceX.com has filed a counterclaim, charging that FragranceNet is taking similar actions regarding FragranceX.com’s brand, says John Dozier, an attorney representing FragranceX at Richmond, VA-based Dozier Internet Law P.C. “We’re alleging that they’re doing what they’re citing us for,” he says. “They’re purchasing our name in keywords on Google.”