Argos is a popular name for companies all over the world, but the domain name argos.com is owned by a US company, Argos Services Incorporated (US Argos). UK retailer, Argos Limited (UK Argos) recently lost its claim in the English High Court against US Argos for trade mark infringement and passing off through argos.com.
UK Argos is a well-known British retailer of consumer products. It is the owner of two registrations for EU trade marks, both for the word ARGOS. US Argos is a US software company that only trades in North and South America.
US Argos has traded under the name ARGOS since 1991. In 1992, it registered the domain name argos.com for use as a commercial website. By 2004, a large volume of people from the UK and Ireland were visiting argos.com under the misunderstanding that it would lead them to UK Argos’s homepage. Between 2008 and 2015, US Argos created a version of the site for UK traffic which displayed advertisements through Google’s AdSense programme. Some of the advertisements were for UK Argos or UK Argos’s competitors. Payments made by UK Argos to Google for clicks on the advertisements were in part received by US Argos. In the words of UK Argos, this added insult to injury.
UK Argos claimed that the use of argos.com in conjunction with Google’s AdSense advertising amounted to (a) a trade mark infringement under EU Regulations; and (b) passing off.
The court rejected all the claims by UK Argos. In relation to the alleged trade mark infringement, the court held that the use of the sign ARGOS did not impair the distinctive character or repute of UK Argos’s marks, nor did it take unfair advantage of them. US Argos gained nothing but a small income stream from a commercially unobjectionable advertising programme. It was also a programme UK Argos chose to participate in.
In any event, the court also held that any alleged prejudice was not without due cause. US Argos did not set out to take advantage of UK Argos’s mark, nor did it induce the visits from UK consumers. They had simply taken advantage of an opportunity to make money from a particular set of circumstances.
When dealing with passing off, the judge did not find any material misrepresentation by US Argos which led the public to believe that the goods or services offered by US Argos were those of UK Argos. He also did not accept that argos.com was an instrument of fraud. Visits to the site by UK consumers were the result of error and not deception, and the claim for passing off failed.
Many commentators have described this as a David and Goliath case. Incidentally, Argus was an all-seeing, many-eyed giant in Greek mythology (hence its popularity as a company name) and certainly the giant here argued that the claims had to be viewed in light of the enormity of their goodwill and reputation. Whilst acknowledging the extent of UK Argos’s goodwill, the judge made clear that the breadth of UK Argos’s trade mark rights were not such as to require US Argos to give up on a lawful opportunity to generate income. The case is a reminder of the importance of the race for popular domain names. If a company wants to benefit from a .com domain, it should register the domain before anyone else does.