25. July 2013
Google has been ordered by a US court to deactivate ALL Gmail accounts which contain the characters ‘wwwilliam’. In the context of a trademark dispute brought by W.W. Williams Company, the technology company refused to delete Gmail accounts which had been used to commit fraud. The court took the view that Google had therefore contributed to the commission of a trademark infringement.
W.W. Williams Company specialises in servicing lorries and selling diesel engines, transmissions, refrigeration units and power generation equipment. After several fraudulent orders were placed in the company’s name, it sought a temporary restraining order against the perpetrators and against Google.
The orders concerned technical equipment such as satellite telephones and had a total value of over $60,000. Fraudulent purchase forms containing W.W. Williams Company’s name, trademark symbol, credit and financial information and trading address were used to place the order. The company then received verification requests and even invoices.
W.W. Williams denied having placed any of the orders and feared the risk of confusion between the false orders and its own goodwill. Consequently the company brought a court action against unnamed defendants claiming for breach of trademark and personality rights.
The court questioned whether trademark law was applicable to the case as the defendants had not ‘used the [trademark] in commerce…in connection with the sale…of any goods or services’; rather the defendants had committed corporate identity theft in order to place fraudulent orders. The court therefore doubted whether the claimant would succeed in main proceedings.
Nevertheless, the court held that the claimant had raised ‘serious questions’ about the merits of its trademark claim and that there was no case law preventing the application of trademark law to such circumstances. The judges therefore proceeded to evaluate the possibility of a trademark infringement and found that a risk of confusion between the fraudulent order forms and W.W. William’s trademarks existed.
Google’s contributory trademark infringement
Some of the fraudulent orders had been sent via Gmail addresses, including the address firstname.lastname@example.org. The claimant therefore requested that these accounts be deactivated. Google refused.
The claimant argued that by refusing to deactivate accounts which had been used for fraudulent purposes, Google had contributed to the commission of a trademark infringement.
The court found in favour of the claimant. It determined, without hearing evidence, that Google exercises control over the Gmail accounts and that the technology company had knowledge of the illegal use of the accounts. The court held that by refusing to deactivate the accounts, Google could indeed be held liable for contributory trademark infringements.
Gmail accounts must be deactivated
Subsequently, the court ordered Google to deactivate all Gmail accounts which contain the characters ‘wwwilliam’, ‘wwwilliamsincs’ or ‘wwwilliamsincss’. Furthermore the court ordered that Google not permit anyone to use the characters ‘wwwilliam’ in the future.
Whether innocent Gmail users will suddenly discover that their accounts have been deactivated will become clear in the near future.
You can read the judgment here.
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Categories: Trademark Law