Online contact lens seller 1800Contacts has been among the most litigious marketers, alleging that companies ranging from Walgreen to Lensfast have infringed its trademark by purchasing the term as trigger for pay-per-click ads on search engines.
Now one of the defendants, Lens.com is going on the offensive.
Lens.com alleges in court papers that 1800Contacts is violating antitrust laws and engaging in "vexatious and sham" litigation by suing 15 competitors over their paid-search campaigns.
"This lawsuit is about 1-800's bold and unlawful crusade to obtain or maintain its dominant position in the direct-to-consumer market for replacement contact lenses," Lens.com argues in its complaint, filed this month in U.S. District Court in Nevada. "Notwithstanding its carefully crafted image, 1-800 has battled to censor and impede the universe of information that can be passed on to consumers; and conspired to ensure that consumers never taste the fruits of competition."
Lens.com was first sued by 1800Contacts in 2007 for allegedly infringing its trademark by purchasing its name as a keyword on search engines. Late last year, U.S. District Court Judge Clark Waddoups in Utah dismissed the lawsuit, ruling that the use of 1800Contacts' name to trigger search ads for Lens.com did not confuse consumers.
Waddoups specifically rejected 1-800-Contacts' theory that showing a Lens.com ad for the query term 1800Contacts is similar to "a consumer asking a pharmacist for Advil and the pharmacist handing the consumer Tylenol."
The judge also said in his opinion that if 1-800-Contacts was able to prevent competitors from appearing in search results when consumers searched for its name, the result would be "an anti-competitive, monopolistic protection, to which it is not entitled."
In April, 1800Contacts sought to reopen the case, arguing that it has unearthed new evidence. Lens.com, which says it has already spent more than $1.4 million "to defend against 1-800's frivolous infringement claims," is asking for a declaratory judgment that it didn't infringe 1800Contacts' trademark.
Additionally, Lens.com asserts, 1800Contacts has unlawfully attempted to dominate the direct-to-consumer market for contact lenses by bringing or threatening trademark infringement claims against a host of competitors.
"Beginning in or around 2005, 1-800 implemented a business practice, which called for 1-800 officials to conduct weekly searches of "1-800 Contacts" and variations thereof on Google, Yahoo and other Internet search engines," the lawsuit alleges.
"Upon information and belief, when its weekly searches returned the sponsored link of a competitor, 1-800 would then accuse the competitor of purchasing 1-800's trademark as a keyword from the Internet search engine. Upon information and belief, 1-800 sent cease and desist correspondence to all such competitors," it continues.
Lens.com argues that 1800Contacts did so in order to coerce competitors into agreeing that they would stop purchasing the term to trigger search ads, which helped the company cement a dominant market position.
1800Contacts did not respond to Online Media Daily's request for comment.