• by Wendy Davis  @wendyndavis, January 11, 2022

Online eyewear retailer Warby Parker used the brand name “1-800 Contacts” to trigger search ads as part of a plan to “misdirect” shoppers, 1-800 Contacts argues in new court papers.

“When Warby began selling contact lenses in or around November 2019, it wanted a shortcut to success,” 1-800 Contacts writes in papers filed Monday with U.S. District Court Judge Kevin Castel in New York. “To execute its plan, Warby began bidding on and purchasing the 1-800 Contacts marks as keywords on Google and other Internet search engines.”

1-800 Contacts adds that Warby Parker sought “to intentionally deceive consumers who search online for 1-800 Contacts by misdirecting them to a Warby website that mimics the format and coloring of 1-800 Contacts’ website.”

1-800 Contacts' papers come in response to Warby Parker's request that Castel dismiss 1-800 Contacts' lawsuit before trial.

The dispute between the companies dates to August, when 1-800 Contacts sued Warby Parker over its use of the brand name 1-800 Contacts to trigger paid search ads. 1-800 Contacts added that search users who clicked on the ads were taken to a landing page with design similar elements to 1-800 Contacts' website -- including a light blue background and discount offer.

Last month, Warby Parker urged Castel to throw out the case, arguing that the allegations, even if true, wouldn't show that Warby Parker's search ads were likely to confuse consumers.

“Courts that have analyzed whether a party’s use of a competitor’s mark in keyword advertising results in likelihood of confusion almost always find no likelihood of confusion if all that defendant has done is use another’s mark as a keyword to trigger an ad for defendant in which the other’s trademark does not appear,” Warby Parker wrote.

1-800 Contacts counters in its new filing that consumers who search for “1-800 Contacts” expect its site, and affiliate links, to “be the initial results displayed.”

“1-800 Contacts has plausibly alleged that online shoppers are confused by Warby’s keyword bidding and that consumers are not sufficiently sophisticated to be impervious to Warby’s unlawful plan,” 1-800 Contacts writes.

The company also says it would be premature to dismiss the lawsuit, given that evidence hasn't yet been developed.

“1-800 Contacts has not yet had occasion to pursue a consumer survey, seek documentation of actual confusion within Warby’s possession, or solicit empirical studies or expert testimony,” the company writes.

1-800 Contacts has a long history of suing rivals over their search advertising campaigns. Between 2004 and 2013, the company sued or threatened to sue at least 14 competitors for alleged trademark infringement, arguing that its trademark was violated when rivals u sed the phrase “1-800 Contacts” to trigger a search ad.

Thirteen of the competitors settled with 1-800 Contacts by agreeing to restrict the use of its trademark in search advertising.

Lens.com, the only company to fight the lawsuit, largely prevailed.

Those prior cases were at the center of an antitrust action by the Federal Trade Commission, which ruled several years ago that 1-800 Contacts acted anticompetitively by forging deals with rivals that limited their ability to advertise.

Last year, the 2nd Circuit Court of Appeals reversed the FTC's ruling, writing that courts should defer to settlement agreements -- even if agreements about the use of trademarks could limit competition.

1-800 Contacts sued Warby Parker soon after the appellate court issued that decision.

Warby Parker is expected to respond to 1-800 Contacts' newest court papers by the end of the month.