Trademark Trickery: In scam, search engines duped into diverting queries to competitive Web sites
InternetWeek, Monday, September 29, 1997
Imagine a form of bait-and-switch marketing in which you supply the bait and your competitor flips the switch.
It's already happened on the Internet.
In a subtle feat of Web trickery, viewers seeking information on a trademarked brand have been sent instead to a competitor's site. Otherwise reputable companies have stalked their competitors' public Web sites, grabbed HTML code off the servers and redirected inquiries from search engines to their own sites.
And in an even more blatant case of piracy, one company tricked the public search engines to redirect queries intended for an unsuspecting competitor that does not even have a public Web site up and running.
The victim, Insituform Technologies Inc., Chesterfield, Mo., only discovered the practice was going on as it began developing a public Web site and started using search engines such as Yahoo and Lycos. Upon further research, Insituform found that its competitor was using meta tags, which are invisible to Web surfers but not search engines, in an attempt to lure away customers.
The perpetrator, National EnviroTech Group, embedded Insituform's trademark in the meta-tag keyword section of its Web page as a way to get itself recognized by search engines. When users performed a keyword search on Insituform's trademark, a listing for National EnviroTech Group was returned.
But it appears that using meta tags to divert search engines is now illegal. In what may prove to be a precedent-setting case, Insituform, which manufactures liners to repair pipes, recently won a permanent injunction from a federal court in Louisiana preventing National EnviroTech Group from including Insituform's trademark in the meta-tags section of its Web site. As part of the ruling, National EnviroTech also must make sure the search engines stop routing queries intended for Insituforum to its own site. Insituforum did not seek monetary compensation although an attorney for the company said it could have.
"We don't know how much business we may have lost, but what's more important is we don't know how many of our customers found out about our competitors through the search engine," said John Kalishman, director of marketing at Insituform, who has led the company's Web site development effort.
"Our trade name is one of our most valuable assets,"Kalishman said.
National EnviroTech Group could not be reached for comment. "It's a misdirection concept, it's as if they had altered the phone company's database for directory assistance," said Joshua Paul, the trademark attorney for Cowan, Liebowitz and Latman (www.cll.com) in New York, who worked on the case.
In the traditional business world, the federal Lanham Act protects companies from unfair competition using trademarks. But in cyberspace, the landscape is just being shaped.
"My prediction is that there will be enough judicial decisions and precedents over the next year that only the fringe element will be using this tactic," said Paul.
There are other cases. A federal judge in San Francisco recently ordered a Web site operator to remove the words "Playboy" and "Playmate" from its site after Playboy Inc. filed suit, according to Neil Smith, an attorney with Limbach & Limbach in San Francisco who represents the magazine.
"This practice could destroy search engines as a way to obtain accurate information on companies and their products," said Paul.
Indeed, Insituforum last week said it will avoid using search-engine services to lure customers to its new site, scheduled to be launched next month.
"We learned that we're going to go direct to our customers to market our Web site and not rely on the search engines," Kalishman said. "You have to promote yourself to end users and not rely on something else to do that for you."
All the major Internet search engines, except Excite, use meta tags as part of their proprietary methods for populating their databases with Web content, according to Mark Pruner, an attorney with Web Counsel in White Plains, N.Y., who researched the Insituform case.
"We've talked about eliminating the tags," said Sarah Garnesy, marketing and communications manager for Lycos Inc., the Framingham, Mass., search-engine service. "If it turns out that the use of tags is being misused, we'll consider dropping them."
The potential for misuse is the reason Excite Inc. does not use meta tags, according to Graham Spencer, the service's chief technology officer. "Meta tags are a good technology in a friendly environment, but the Internet is adversarial," he said.
"For the most part, marketing on the Web seems to be handled in a professional and civil manner," said Jack Shaw, president of Electronic Commerce Strategies in Marietta, Ga.
"Obviously, there's not a place on the Web or anywhere else for these kinds of tactics," he added.
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