UK retailer Argos loses out in battle over argos.com
US rival’s use of domains and Google advertising did not amount to infringement of UK rights.
The UK retailer Argos Limited (UK Argos) has recently lost a claim in the High Court against Argos Services Incorporated (US Argos) for trademark infringement and passing off because of the domain name argos.com.
US Argos is a software company that only trades in North and South America. It registered the domain name argos.com back in 1992, however by 2004 a considerable number of people from the UK and Ireland were visiting the site under the misapprehension that it was the website for UK Argos. US Argos decided to take advantage of this and created a version of the site for UK traffic, which displayed advertisements for UK Argos (as well as its competitors) through Google’s AdSense programme. Payments made by UK Argos to Google for clicks on the advertisements were in part received by US Argos which, in the words of UK Argos, added insult to injury.
In the lawsuit against US Argos, UK Argos argued that the use of argos.com, along with Google’s AdSense advertising, amounted to both passing off and trademark infringement under EU regulations. The court rejected both these claims.
Regarding passing off, the court ruled that visits to the site by UK consumers were the result of error and not deception. Furthermore, the judge did not find any misrepresentation by US Argos which led the public to believe that the goods or services offered by US Argos were those of UK Argos. It was also ruled that US Argos did not set out to take advantage of UK Argos’s mark, nor had it duped the UK consumers, it had merely taken advantage of a particular set of circumstances.
Regarding the alleged trademark infringement, the court held that the use of the sign ARGOS did not impair the distinctive character of UK Argos’s marks, nor did it take unfair advantage of them. US Argos gained nothing but a small income stream from a commercially unobjectionable advertising programme. It was also a programme UK Argos chose to participate in.
It turns out that Argos is a very popular name for businesses around the world, perhaps due to its origin – Argus – which was an all-seeing, many-eyed giant in Greek mythology. This court case serves as a useful reminder that if a business wants to benefit from a particular domain name, it should register it before anyone else does.