If you have watched any NFL playoff football on TV this year you have undoubted seen ads for Honda using its Leap List Campaign.
They have been running several commercials in heavy rotation no doubt spending into the tens of millions of dollars on TV ads all based on the term Leap List.
The official site for the campaign is leaplist.honda.com
Now comes word that the Honda has bought time on the Superbowl at a reported $4 Million a pop to run more ads centered around its Leap List campaign.
Simply put, Honda.com should have bought the domain name LeapList.com before launching this campaign.
The domain name LeapList.com has been registered since September 2010 and is under privacy at Godaddy.com.
LeapList.com is parked with InternetTraffic.com and most of the results on the page are related to cars.
Its not the domain holders fault.
Its Honda’s fault.
Fail!
“most of the results on the page are related to Honda products. Its not the domain holders fault.”
Huh? This is yet another great example of what domainers might call opportunistic usage which in reality is nothing more than parasitic band wagon jumping. We all know that in the absence of confusion with Honda’s marketing efforts the domain name is completely worthless.
If you forget to pick up your wallet after paying a bill at a restaurant, and someone else notices it and decides to raid it and its contents, I suppose thats your fault and not the raiders fault right?
I know you savy domainer types will say that the registrant hasnt done anything wrong here. Maybe, but they havent done anything right either and storys like this (and there are plenty) only serve to continue to illustrate how scummy domainers are.
It may be Honda’s fault for failing to register the domain name but for the registrant to trade off of their campaign is slimy. They should take a leap!
It’ll be interesting to see if my Leap.com company domain gets a Superbowl spike in traffic due to their commercials. I’d consider that traffic to be of *negative* value, though (just wastes bandwidth!).
Honda – fail
Registrant – failure
Internet Traffic – Boo
Wow, Applied Semantics has nothing on Schilling’s Internet Traffic. For this domain name to display links related to Honda is indicative not only of Franks strong commitment to developing a new source of traffic that is devoid of clicks of a dubious nature but its evidence of his platforms revolutionary and uncanny ability to target ads to their most logically associated product. The problem is that there is no real widespread association between the domain and honda. However Internet Traffic targets ads for parked domains or whoever is doing it for them, they are doing a stellar job of raising the bar and bringing respectability to domain parking.
Ha Ha where would we be without the corporate world to entertain us?
sounds like Honda marketing group consists of Peter Principle graduates.
Not too worry Pennsylvania Ave has a printing press and after all Gov’t motors got some why not share that wealth with other mfg’s.
I own a few names that need homes. The new owners just don’t know they need them yet LOL
So guys you own a generic domain for a couple of years and some company decides to come up with an ad campaign or name their new movie or video game or product using the term you’ve owned the .com in.
You want to put an obligation on the domain holder to make sure nothing on the page relates to the newly used term?
Really?
In this case before deciding to spend $10’s of million maybe even $100 million on an ad campaing don’t you think the adveriter should have spent .0000001 of its budget to secure the domain?
You want to put an obligation on the domain holder to make sure nothing on the page relates to the newly used term?
Not neccessarily but in this instance if we were to assume that the domain name was owned long before Honda came up with the idea for its ad campaign then its probably safe to assume that the domain name did not show links related to Honda before the campaign was launched. Suddenly after the commercial plays the links change to links associated with the brand and its competitors. Perhaps you can explain how that happened. Does Frank have staff that are paid to watch commercials all day who then check their database for domain names that can be tweaked to trade off of new ad campaigns? Hardly sounds like a new cutting edge technology.
Domain
Almost every PPC page has a search feature on it including internetsales on the bottom of the page.
http://leaplist.com/
So as visitors search for topics not found on the page, the PPC page will adjust itself to match the topics the surfer is looking for.
Its usually the users that drive the keywords onto a PPC on a previously owned domain when something new comes out.
Google leap list and out of the videos and results 12 out of 14 are Honda.
They have to build 3.5 million cars this year, after suffering an earthquake and flooding. They will make a profit of $2800 million even with production down and yet:
They should be worried about wether they registered leaplist.com
I am sure its up there with making sure the tampon machine in the factory bathroom is fully stocked.
it’s one thing if leaplist.com has a list of paid links that concern automobiles.
but it’s another thing if it simply has a search box and a user who enters “honda” in the box can retrieve paid links for automobiles, including honda.
can we really assert a trademark infringment claim against providing a search box?
maybe this is a loophole, but if we accept that this loophole is not going to close anytime soon, then perhaps mhb has a point.
consider that it’s the responsibility of the corporation’s marketing and legal departments to know what loopholes exist and to act accordingly.
they are charged with serving and protecting the company’s interests.
if an existing domainname is a potential problem, it’s their job to deal with. due diligence.
of course, honda may not consider leaplist.com to be a problem. that’s their decision. but the decision needs to be made early, not late.
there are a great many people in positions of responsibility (e.g., in charge of substantial budgets) who can only think in terms of “major websites”. they imagine all search must funnel through some high traffic website, like yahoo or google.
then there is this guy in the bahamas with a few hundred thousand “minor websites”.
each chooses their own strategy.
No doubt the owner has already approached Honda into buying the domain. Would be interesting to watch how this plays out. Sale vs. Legal
Mike, have there been any UDRP cases with situations similar to this? I tend to agree with you that the domain owner shouldn’t be responsible if someone registers/uses a TM after they’ve gotten the domain and ads for it wind up showing up on the domain. That said, I would imagine there’s a fine line and the domain owner should tread carefully. I can’t think offhand of particular decisions, but haven’t there been cases where domains were lost due to ads targeting the TM even though the domain wasn’t originally registered/purchased in bad faith?
MHB –
Talking of UDRPs have you looked at the “hotlist” for Pool deleting domains today?
Out of 30 domains 26 are typos of facebook.
Class.
Back
I did
Now published
http://www.thedomains.com/2012/01/26/pool-top-deleting-domain-list-for-friday-26-out-of-30-are-facebook-typos/
Long before there were parked domains, there were things like Yellow Page directories, newspapers, and other platforms for publications of advertisements. What used to happen is that people would buy advertising space in, for example, the Yellow Pages, and those people would be engaged in trademark infringement.
Now, Yellow Page directories are nothing but listings of paid advertisements. If they had to run out and get a $5000 non-infringement opinion on every ad they ran, they simply couldn’t operate. Nevertheless, what would happen is that TM claimants would sue the phone book publishers because the phone books contained ads which infringed their mark. They would seek not only monetary damages against the publisher, but also try to get an order requiring the publisher to retrieve all of those zillions of directories. Since a telephone directory could contain dozens of infringing ads, this was simply not a practical situation.
This situation was deemed “innocent infringement” in that the infringement does not really arise from the deliberate action of the publisher, but it arises from the way that advertising space is sold. Simply put, the entire business of advertising-supported publication platforms would grind to a halt if publishers were held responsible for the activities of other people who use those platforms.
Finally, 15 USC 1114 was updated to provide that monetary damages would not be available in those situations. If someone is running an advertising directory in a newspaper, magazine, and so forth, the law was amended to provide that the only thing a plaintiff could get is an injunction against future publication of the infringing content.
The relevant part of that statute is here:
http://www.law.cornell.edu/uscode/15/1114.html
“(B) Where the infringement or violation complained of is contained in or is part of paid advertising matter in a newspaper, magazine, or other similar periodical or in an electronic communication as defined in section 2510 (12) of title 18, the remedies of the owner of the right infringed or person bringing the action under section 1125 (a) of this title as against the publisher or distributor of such newspaper, magazine, or other similar periodical or electronic communication shall be limited to an injunction against the presentation of such advertising matter in future issues of such newspapers, magazines, or other similar periodicals or in future transmissions of such electronic communications. The limitations of this subparagraph shall apply only to innocent infringers and innocent violators.”
I published an article a while back, suggesting the term “PPC roadkill” for those domain registrants caught in the situation in which a long-registered domain’s ad content becomes overwhelmed by search relevance which starts to associate the domain search terms with an unanticipated new trademark use. If you are looking for cases, there are several cited there, and UDRP panelists have demonstrated various degrees of understanding of how this stuff works.
Another relevant doctrine from good old-fashioned trademark law is that of “reverse confusion”. Reverse confusion takes place when a junior claimant attains a sudden degree of consumer recognition which impacts a longstanding senior user of the term. For example, there was in some midwestern town, a local feminist bookstore called Amazon, which was a brick and mortar store pre-dating Amazon.com. Now, federal registration of a mark has the effect of locking-in senior users to their existing territory of use. The problem arises in these situations when consumers nonetheless get the impression that the senior business is somehow associated with the more famous junior user. For example, regardless of how long the Amazon bookstore was around, people in that area might assume there is some sort of association or sponsorship of the bookstore by Amazon.com.
This happens a lot. There were a lot of local restaurants in various places named after some guy named McDonald when McDonald’s started out its business in California. In my area, there was a “Dairy Queen” ice cream parlor dating back to the 1950’s which pre-dated the more recent well-known franchise operation.
These types of situations are roughly analogous to what search relevance systems do to populate domain names with advertisements. Through no deliberate action of the domain name registrant, the market (as reflected in search relevance) tilts toward associating a pre-existing name with a new trademark.
The available remedies in “innocent infringement” and “reverse confusion” cases recognize that these things happen through no fault of the senior party, who is not able to control consumer perception, and has become something of a victim of forces beyond its control. As noted above, the remedy for “innocent infringement” amounts to “okay, now that you know about it, make it stop in the future”. In the case of reverse confusion, if the junior party can demonstrate that it has attained a level of market recognition far beyond the senior party, then a court can require the senior party to change its name, but the senior party is going to have to be compensated for that. It’s a weird sort of action in which the junior party is seeking to have the confusion eliminated by forcing the senior party to accept monetary compensation.
Of course, you mention “the internet” and everybody goes nuts and thinks we somehow need to re-invent the wheel in relation to the types of things that trademark law has been dealing with for decades prior to the existence of the internet. Reasonableness flies right out the window, and people with no grounding whatsoever in traditional IP law pronounce themselves “cyberlaw experts” as if an entirely new set of principles was needed from the ground up. It’s not.
Domain holder got lucky for Honda’s fault.
Right jberryhill
Unfortunately the current example is not a case of either innocent infringement or reverse confusion