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A Manhattan federal judge has enjoined an Internet advertiser from delivering “pop-up” ads to visitors of a retail Web site. Contact lens retailer 1-800 Contacts Inc. requested the injunction pursuant to its suit against Internet “adware” purveyor WhenU.com for trademark infringement and unfair business practices. WhenU.com had been sending pop-up ads for Vision Direct Inc., a competing contact lens retailer also named as a defendant, to visitors of 1-800 Contacts’ Web site who had, often unknowingly, installed WhenU.com’s software on their computers. In granting the injunction, Southern District of New York Judge Deborah A. Batts cited a strong likelihood of customer confusion arising from the appearance of the pop-ups. “The fact that Defendants’ pop-up advertisement for competing Internet contact lenses retailers appears shortly after a consumer types into the browser bar Plaintiff’s trademarked name and accesses Plaintiff’s homepage increases the likelihood that a consumer might assume Defendants’ pop-up advertisements are endorsed or licensed by Plaintiff,” Batts wrote in 1-800 Contacts v. WhenU.com, 8043-02. Batts’ injunction, issued in an 88-page decision, ends a string of victories for the pop-up ad industry. In September, a federal judge in Virginia dismissed a similar suit brought against WhenU.com by the U-Haul truck rental company. Last month, Judge Nancy Edmunds of the U.S. District Court for the Eastern District of Michigan denied injunctive relief to Wells Fargo & Co., which had also sued WhenU.com. Online retailer Overstock.com recently withdrew suits in federal court in Utah against WhenU.com and Claria, another pop-up purveyor. Judge Gerald Bruce Lee of the U.S. District Court for the Eastern District of Virginia wrote in the U-Haul case that though pop-up ads were annoying, they did not interfere with trademark because the Windows operating system permitted multiple windows for pop-ups and other applications. He also said no trademark violation was involved because the pop-ups were delivered only to computer users who had downloaded WhenU.com’s SaveNow software, which Internet users frequently agree to do in order to download other free software such as screensavers. But Batts took note of a survey undertaken by an expert hired by 1-800 Contacts, which showed that 68 percent of SaveNow users did not know they had the software installed on their computers and that 76 percent who did know they had the software did not know what it did. The survey also found that 59 percent of SaveNow users believed pop-up ads were placed on sites by the site’s owners and 52 percent believed such ads were pre-screened and approved by the Web sites on which they appear. The survey results indicated “a consumer is likely to associate a Vision Direct pop-up advertisement generated by the SaveNow program with the 1-800 Contacts Web sites on which it appeared,” Batts wrote. The judge also found that the use by WhenU.com and Vision Direct of “www.1800contacts.com” as a term in the SaveNow directory triggering Vision Direct pop-ups added to the likelihood of customer confusion and trademark infringement. Terence P. Ross of Gibson, Dunn & Crutcher, representing 1-800 Contacts, hailed Batts’ decision as “very significant,” and noted it was the first decision on pop-up ads to be based on live testimony from witnesses. “It’s likely to carry more weight than the other decisions,” said Ross. Batts’ decision is the second by a federal judge enjoining pop-up ads. Last year, Judge Claude Hilton of the U.S. District Court for the Eastern District of Virginia enjoined another adware company whose pop-ups were appearing on major media sites, including those of The Washington Post and The New York Times. The case later settled. Ross said he expected the 1-800 Contacts case to continue to trial, though he expected an appeal at some point. “Everyone has known these legal issues are novel and will have to be settled at the circuit level,” he said. Arnold Lutzker of Washington, D.C.’s Lutzker & Lutzker, a lawyer for WhenU.com, did not return a call seeking comment.

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