Trademark Injunction Demands `Negative Keyword' Option When Buying Search Advertising

The court's final order in Orion Bancorp Inc. v. Orion Residential Finance LLC, No. 07-cv-1753 (M.D. Fla., March 25, 2008), is a good example of the sweeping relief possible when the defendant defaults in an online trademark infringement case. Here, the plaintiff, which owns registered marks for ORION, ORION BANK, and ORION BANCORP, was able to nudge the defendant, a competitor in the residential mortgage business, off the orionresidentialfinance.com domain name. But not only that: in addition to preventing the defendant from capitalizing in any manner on the plaintiff's ORION mark, the court's order does a very thorough job of preventing the defendant from engaging in competitive advertising (i.e, Check us out, we're cheaper and faster than Orion Bank.) against the plaintiff. Not only was the defendant enjoined from purchasing Google AdWords containing the plaintiff's marks, it was ordered to purchase a "negative adword" option that prevents ads for the defendant's services from ever appearing when an Internet user searches with a query containing the plaintiff's marks.

The defendant was permanently enjoined

from purchasing or using any form of advertising including keywords or "adwords" in internet advertising containing any mark incorporating Plaintiff's Mark, or any confusingly similar mark, and shall, when purchasing internet advertising using keywords, adwords or the like, require the activation of the term "ORION" as negative keywords or negative adwords in any internet advertising purchased or used. (For purposes of this court order, a "negative keyword" or "negative adword" shall mean a special kind of advertiser keyword matching option that allows an advertiser to prevent its advertisement from appearing when the specific terms are a part of a given user's internet search or search string. It does not infer that the Defendant may use the specified negative keywords or adwords for any other purpose.)

...

from publishing, assembling, marketing, distributing, or otherwise utilizing for commercial or beneficial gain, any literature, business forms, advertisements, signs, or other representations regardless of the medium, which contains the term ORION, or any other confusingly similar term.

Cases like this one (and this one) demonstrate that trademark owners can obtain much more punishing relief against competitors with the Lanham Act in federal court than with the Uniform Domain Name Dispute Resolution Policy in an arbitration case.