• by Wendy Davis  @wendyndavis, April 16, 2008

A federal court has ruled that Google can be sued for trademark infringement and cybersquatting for serving ads on sites with domain names that are similar to registered trademarks.

In the case, golf club manufacturer Vulcan Golf takes aim at Google for its "AdSense for Domains" program, which populates otherwise empty sites with AdSense ads. Vulcan Golf also sued other companies involved in creating and registering the sites, which have names like wwwVulcanGolf.com (without a period between www and Vulcan) and vulcanogolf.com.

As with "typosquatting" lawsuits, Vulcan Golf complains that Google and the other companies are unfairly harnessing its trademark. The theory is that these sites will be visited by people who are trying to reach Vulcan Golf, but err when typing the domain name into their address bars.

Google had asked for the case to be dismissed, arguing that it wasn't responsible for any alleged trademark infringement or cybersquatting. "Google neither owns nor operates any of the domain names of which Vulcan complains," Google argued. "Neither does Google (or its advertisers, for that matter) use Vulcan's claimed marks (or anything similar) in the text of any advertisements." The search company also said in its court filing that it has already removed the AdSense ads that Vulcan Golf objected to, and would have done so earlier had Vulcan Golf asked it to remove them before bringing the lawsuit.

Judge Blanche Manning of the Northern District in Illinois dismissed some portions of the case, but ruled that some charges relating to cybersquatting and trademark infringement could go forward. She wrote that Vulcan Golf's allegations that Google "pays registrants for its use of the purportedly deceptive domain names ... uses semantics technology to analyze the meaning of domain names and select revenue maximizing advertisements and controls and maintains that advertising" was sufficient to warrant further proceedings.

Still, it's not clear that Vulcan Golf's allegations against Google are covered by either the anti-cybersquatting statute or trademark law, said Eric Goldman, director of the High Tech Law Institute at Santa Clara University School of Law. "Domain name parking doesn't squarely fit within cybersquatting laws," he said. "Trademark law might cover it, but might not."

The anti-cybersquatting statute, passed in 1999, was aimed at preventing people from registering another company's trademark as a domain name and then attempting to sell the domain back to the company.

There's also no clear answer to whether trademark laws are violated when companies use trademarked names, like Vulcan Golf, to trigger search ads. "We're really struggling with the application of existing trademark law to new factual situations," Goldman said.