Internet Trademark Case Summaries
Vulcan Golf, LLC v. Google, Inc.
552 F.Supp.2d 752 (N.D. Ill. 2008) (defendants’ motion to dismiss); 254 F.R.D. 521 (N.D. Ill. 2008) (motion for class certification)
Vulcan Golf, a manufacturer of golf equipment and owner of the mark VULCAN GOLF and domain name “vulcangolf.com,” along with a putative class of additional plaintiffs, sued Google, Ireit, Sedo, Oversee.net, and several other defendants. Plaintiffs alleged a “massive scheme . . . to generate billions of advertising dollars” through the “parking” of domain names that are “the same as or substantially and confusingly similar to” the plaintiffs’ distinctive trade names or trademarks. Plaintiffs defined “parking” as the “aggregat[ion of] numerous domain names from individual domain registrants and contract[ing] with an advertising service (here, Google) to license and monetize those domain names.” The plaintiffs defined “monetizing” as “using a domain name for commercial gain by generating revenue from Internet advertising located on [the] webpage.” For example, plaintiffs alleged that one of the defendants registered the domain name “wwwvulcangolf.com” expecting that a certain number of internet users would mistype the Vulcan Golf domain name and then click on the Google-generated advertising links hosted on the imposter site, thus generating profits for the defendants. Plaintiffs claimed Google aided this process by deciding which advertisements would be most profitable for each domain name. Plaintiffs sued for cybersquatting, direct, contributory, and vicarious trademark infringement, and dilution. Plaintiffs also asserted a racketeering claim under RICO. The court denied defendants’ motions to dismiss the Lanham Act claims. Regarding the ACPA claim, the court rejected defendants’ argument that domain name “parking” was not covered by the ACPA. Although defendants never registered or owned the domain names at issue, the court found it “plausible that these allegations fall under the ACPA’s prohibition of trafficking in” domain names. The court also rejected defendants’ argument of no confusing similarity and no bad-faith intent to profit as inappropriate at the motion to dismiss stage. Regarding trademark infringement, defendants argued that they did not use plaintiffs’ marks in commerce, but rather were “merely facilitator[s] providing a marketplace for the pairing of domain names.” Defendant Sedo argued that it “simply serves as a marketplace for domain name owners to list their domain names, and if the domain name owner so chooses, Sedo can link the domain name owner to advertisements offered by Google.” However, the court found defendants “did more than perform the automated, ministerial function of registering and cataloguing domain names,” citing plaintiffs’ allegations that defendants used a proprietary tool to search for and register recurring domain name mistypes. The court also declined to consider defendants’ arguments against a likelihood-of-confusion and protectability of plaintiffs’ marks because such determinations required discovery and fact-finding and were thus premature at this juncture. Google also argued for dismissal of the direct and contributory infringement claims, claiming a lack of knowledge of any infringement. Plaintiffs, however, cited Google’s continued engagement in the alleged activities even after the filing of the lawsuit and provision of notice to Google, which was sufficient evidence to deny Google’s motion. Google also claimed the “innocent infringer” defense under 15 U.S.C. § 1114(2)(B), which allowed for only injunctive relief against parties deemed innocent infringers. Google claims to have already ceased participation in the allegedly infringing activities, thus leaving nothing for the court to enjoin. The court also denied this motion, finding the fact that Google had ceased participation in the infringing activities outside the permissible factual realm of a summary judgment ruling. Finally, addressing dilution, the court rejected defendants’ arguments that plaintiffs marks were not sufficiently famous to warrant dilution protection based on plaintiffs’ allegations in the Complaint. Defendants also argued no use in commerce, but the court rejected this argument as well.
Plaintiffs later sought class certification on their cybersquatting, trademark infringement, and unjust enrichment claims, proposing a class consisting of any individual or mark owner whose personal name or mark is “identical or differs from a domain name parked and advertised on” by any of the defendants “only by addition of a pre-pending ‘www’ or ‘http’ or post-pending ‘com.’” The court denied class certification, agreeing with defendants’ argument that Federal Rule of Civil Procedure 23(b)(3) prohibits class certification when class members’ individual issues regarding the claims predominated over the issues of the class. First, membership in the class would be contingent on a potential class member owning the mark or personal name at issue, which “could lead to potentially thousands of individual merits hearings and rulings.” Second, the court noted that a mark’s distinctiveness, as required for cybersquatting protection under the ACPA, could not be assumed on a class-wide basis, thereby possibly requiring the court “to engage in thousands (or more) of individual inquiries as to whether a class members’ mark is distinctive,” which would be “staggering.” Finally, the various affirmative defenses asserted by defendants also militated against class certification.