The U.S. District Court for the District of
Minnesota held that the use of a rival real estate broker's trademark as a
keyword term, as well as in the text of sponsored links, is not a fair use of
the mark where there are other opinions for describing the market the defendant
serves.
Without lengthy analysis, the court found that the
defendant's purchase of search terms like “Edina Realty,” “Edina Reality,” “EdinaReality.com,”
“EdinaRealty,” “EdinaRealty.com,” “www.EdinaReality.com” and “www.EdinaRealty.com”
on both Google and Yahoo did constitute use of the plaintiff's mark in commerce.
The court held that although defendant's use was not "conventional," the
purchase of terms comprising the marks, in order to generate sponsored link
advertisements, satisfied the definition of use in commerce as provided in 15
U.S.C. §1127.
The court briefly evaluated the standard likelihood
of confusion factors and found enough dispute about several factors to require a
trial. Edina Realty proffered as evidence of actual confusion several e-mails
received by MLSonline from consumers inquiring about Edina Realty.
MLSonline also sought dismissal of the trademark infringement claims advanced
against it on the ground that its use was a permitted nominative fair use:
The Court holds that defendant's use of the Edina Realty mark does not
constitute nominative fair use as a matter of law. Defendant uses the mark
as an Internet search term, in its Sponsored Link advertisements, and in
hidden text and hidden links on its website. None of these uses requires
the Edina Realty mark. In its advertisements and hidden links and hidden
text, defendant could easily describe the contents of its website by stating
that it includes all real estate listings in the Twin Cities. Similarly,
defendant could rely on other search terms, such as Twin Cities real estate,
to generate its advertisement. In addition, defendant's use of the Edina
Realty mark in its advertisement does not reflect the true relationship
between plaintiff and defendant. Defendant's advertisement that has
appeared on Yahoo, for example, places the Edina Realty mark in the headline,
which is underlined and in bold font. The name of defendant's company is
listed in much smaller font at the bottom of the ad. Defendant could have
done more to prevent an improper inference regarding the relationship.
In May 2006, the case settled. Lawyers representing
Edina Realty and TheMLSonline.com confirmed that a deal has been reached but
said its terms were confidential.
