The opinion of the court was delivered by: Hon. Blanche M. Manning
Plaintiffs Vulcan Golf, LLC, John B. Sanfilippo & Son, Inc. ("JBSS"), Blitz Realty Group, Inc., and Vincent E. "Bo" Jackson, have filed a complaint styled as a class action lawsuit against the following defendants: Google, Inc., Oversee.net, Sedo LLC, Dotster, Inc. a/k/a revenuedirect.com, Internet Reit, Inc., d/b/a Ireit, Inc.*fn1 , and John Does I-X. The defendants have filed a consolidated motion to dismiss the RICO counts as well as certain of the state law claims. All of the defendants except Dotster have filed their own motions to dismiss various counts. For the reasons discussed below, the consolidated motion to dismiss the RICO counts is granted, the consolidated motion to dismiss the unjust enrichment and civil conspiracy counts is granted, and the individually-filed motions to dismiss are granted in part and denied in part as provided herein.
According to the lengthy First Amended Complaint ("FAC") (469 paragraphs and 91 pages long--the latter counted by hand because the plaintiffs did not paginate the document), the defendants have engaged in a massive scheme to use deceptive domain names on the internet to generate billions of advertising dollars at the expense of the plaintiffs. The specifics of the scheme are somewhat complicated, but in its most simple form, the FAC alleges that certain of the defendants register, license and/or "park"*fn2 , among other things, domain names that are the same as or substantially and confusingly similar to the plaintiffs' distinctive trade names or marks.*fn3 The defendants do this because they know that when an internet user types a domain name into the address bar on the Google web browser, there is a possibility that the user will either guess the domain name for the plaintiff (and guess wrong) or misspell the name he or she is looking for.
For example, the FAC alleges that Dotster has registered and/or otherwise controls the domain name "wwwVulcanGolf.com." FAC ¶ 65. This domain name is obviously very similar to the domain name "www.VulcanGolf.com," which is registered to and has been used by plaintiff Vulcan since May 1997. According to the plaintiffs' theory, Dotster has intentionally registered this domain name without the period after the "www" expecting that a certain number of internet users will mistype the name and will land on the webpage Dotster has created that is associated with the "incorrect" and allegedly deceptive domain name. When that happens, the defendants, having registered similar and purportedly deceptive domain names, profit if the internet user clicks on the advertising that is placed on the "deceptive" domain site. The advertising is allegedly created, sponsored, and maintained by Google which, according to the FAC, has developed "the largest single online marketing/advertising business in the world." The FAC alleges that Google "partners" with domain registrants as well as parking companies and others and consequently has "millions of domain names under its direct or indirect license, use, control, and management" including the purportedly deceptive domains. FAC ¶ 100.
Google allegedly uses sophisticated software that "processes" these domain names and assists in deciding what advertisements would be profitable on each domain. Google and the parking company defendants "collaborate in the placement of advertisements on domains and in the design/optimization of the landing pages associated with those domains." FAC ¶ 111. "To encourage Internet users to click [on the advertisements], Defendant Google, and in some instances other Parking Company Defendants, use targeting solutions that intelligently select the most relevant ads and categories for the domain names." FAC ¶ 113. When a user clicks on the advertising, Google and the parking companies and/or the domain owners receive revenue from that advertiser. The FAC also alleges that the defendants use "redirection, framing, masking, or other methods to prevent or deter even sophisticated users from identifying or confirming Defendant Google's role." FAC ¶ 119.*fn4
In essence, then, the plaintiffs allege that Google and the other defendants have engaged in a wide-ranging scheme whereby they receive "billions of dollars in ill-gotten advertising and marketing revenue" by knowingly and intentionally registering, licensing and monetizing purportedly deceptive domain names at the expense of the plaintiff-mark owners.
Based on this general set of allegations, the plaintiffs, a putative class, have filed the instant amended complaint alleging the following fourteen counts: (1) Count I--RICO (18 U.S.C. § 1962(c)); (2) Count II--RICO (18 U.S.C. § 1962(d)); (3) Count III--Cybersquatting (18 U.S.C. § 1125(d)); (4) Count IV--Trademark Infringement (15 U.S.C. § 1114(1)); (5) Count V--False Designation of Origin (15 U.S.C. § 1125(a)); (6) Count VI--Dilution of Trademarks (15 U.S.C. § 1125(c)); (7) Count VII--Illinois Consumer Fraud and Deceptive Trade Practices Act (815 ILCS 505/2); (8) Count VIII--Declaratory Judgment; (9) Count IX--Common Law Trademark; (10) Count X--Contributory Trademark Infringement; (11) Count XI--Vicarious Trademark Infringement; (12) Count XII--Intentional Interference with Current and Prospective Economic Advantage; (13) Count XIII--Unjust Enrichment; (14) Count XIV--Civil Conspiracy.
As a group, the defendants have moved to dismiss Counts I and II, the RICO counts as well as certain state law claims. All of the defendants except Dotster have moved separately to dismiss various other counts.
On a motion to dismiss under Fed. R. Civ. P. 12(b)(6), the court accepts the allegations in the complaint as true, viewing all facts, as well as any inferences reasonably drawn therefrom, in the light most favorable to the plaintiff. See Marshall-Mosby v. Corporate Receivables, Inc., 205 F.3d 323, 326 (7th Cir. 2000). "While a complaint attacked by a Rule 12(b)(6) motion to dismiss does not need detailed factual allegations, a plaintiff's obligation to provide the 'grounds' of his 'entitle[ment] to relief' requires more than labels and conclusions, and a formulaic recitation of the elements of a cause of action will not do." Bell Atlantic Corp. v. Twombly, 127 S.Ct. 1955, 1964-65 (2007)(citations omitted).
The Seventh Circuit has interpreted Bell Atlantic as follows:
Rule 12(b)(6) permits a motion to dismiss a complaint for failure to state a claim upon which relief can be granted. To state such a claim, the complaint need only contain a "short and plain statement of the claim showing that the pleader is entitled to relief." Fed.R.Civ.P. 8(a)(2). The Supreme Court has interpreted that language to impose two easy-to-clear hurdles. First, the complaint must describe the claim in sufficient detail to give the defendant "fair notice of what the ... claim is and the grounds upon which it rests." Bell Atlantic Corp. v. Twombly, --- U.S. ----, ----, 127 S.Ct. 1955, 1964, 167 L.Ed.2d 929 (2007) (quoting Conley v. Gibson, 355 U.S. 41, 47, 78 S.Ct. 99, 2 L.Ed.2d 80 (1957)) (alteration in Bell Atlantic ). Second, its allegations must plausibly suggest that the plaintiff has a right to relief, raising that possibility above a "speculative level"; if they do not, the plaintiff pleads itself out of court. Bell Atlantic, 127 S.Ct. at 1965, 1973 n. 14.
E.E.O.C. v. Concentra Health Services, Inc., 496 F.3d 773, 776 (7th Cir. 2007). See also Killingsworth v. HSBC Bank Nevada, N.A., 507 F.3d 614, 618-19 (7th Cir. 2007) (observing that Supreme Court in Bell Atlantic "retooled federal pleading standards" such that a complaint must now contain "enough facts to state a claim to relief that is plausible on its face.").
Purported class plaintiffs must themselves have suffered an injury allegedly wrought by the defendant. See Warth v. Seldin, 422 U.S. 490, 502 (1975) (named plaintiffs seeking to represent a class "must allege and show that they personally have been injured, not that injury has been suffered by other, unidentified members of the class to which they belong and which they purport to represent."); see also Burns v. First American Bank, No. 04 C 7682, 2006 WL 3754820, at *4 (N.D. Ill. Dec.19, 2006)("[A] class representative who lacks standing to pursue the class claims will not satisfy the typicality and adequacy prongs of Rule 23(a)."); Terkel v. AT & T Corp., 441 F. Supp. 2d 899, 920 (N.D. Ill. 2006) ("It is clear that the named plaintiffs in a class action must establish standing individually to serve as class representatives.").
In this purported class action there are several defendants. Ireit and Sedo argue that certain plaintiffs lack standing to sue because the FAC does not allege that Ireit and Sedo participated in any wrongdoing with respect to those plaintiffs' allegedly protected marks or names. According to Sedo, plaintiffs Blitz and JBSS have identified nine allegedly deceptive domain names that harmed them, none of which belonged to Sedo or had any connection to Sedo. As such, Sedo contends that Blitz and JBSS cannot establish a concrete injury in fact traceable to any conduct of Sedo and therefore do not have standing to sue Sedo. Ireit makes a similar argument as to defendants Vulcan, Blitz, and Vincent "Bo" Jackson.
In order to establish standing, the plaintiffs attempt to rely on the juridical link doctrine. Under this doctrine, a class action may "proceed where the plaintiffs as a group-named and unnamed-have suffered an identical injury at the hands of several parties related by way of a conspiracy or concerted scheme, or otherwise juridically related in a manner that suggests a single resolution of the dispute would be expeditious." Hudson, 242 F.R.D. at 503 (citations and internal quotation marks omitted). The plaintiffs assert that they should be allowed to proceed against all of the defendants under this doctrine.
The juridical link doctrine, however, is more properly referred to as part of the class certification inquiry. See, e.g. Moffat v. Unicare Midwest Plan Group 31451, No. 04 C 5685, 2006 WL 897918, at *8 (N.D. Ill. Apr. 5, 2006)(noting that because class action certification had been denied, it was "questionable" whether the juridical link doctrine could apply)(citing In re Eaton Vance Corp. Sec. Litig., 220 F.R.D. 162, 171 (D. Mass. 2004)(juridical link doctrine confined to class action analysis). See also Hudson v. City of Chicago, 242 F.R.D. 496, 502 (N.D. Ill. 2007)(in context of motion for class certification, finding juridical link analysis applicable). Class certification is not yet before the court, and any Article III standing issues are inherently intertwined with the class certification determination due to the plaintiffs' invocation of the juridical link doctrine. The court will thus postpone its analysis of the Article III standing issue as raised by Sedo and Ireit until the motion for class certification is before it. This is consistent with the Seventh Circuit's recognition that in certain circumstances, it is appropriate for the court "to consider issues of class certification prior to issues of standing." Payton v. County of Kane, 308 F.3d 673 (7th Cir. 2002)("the class certification issues are . . . logically antecedent to Article III concerns, and themselves pertain to statutory standing, which may properly be treated before Article III standing. Thus the issue about Rule 23 certification should be treated first")(citing Ortiz v. Fibreboard Corp., 527 U.S. 815, 831 (1999)).
The court notes that Ireit, in its individual motion to dismiss, seeks to dismiss numerous counts by arguing that plaintiffs Vulcan, Blitz and Jackson have not alleged and cannot prove that Ireit owns any domain names that infringe these plaintiffs' rights. The court construes these arguments as challenging those plaintiffs' standing. For the reasons just discussed, and without discussing herein each separate instance where Ireit raises the argument, the court denies this portion of Ireit's motion to dismiss without prejudice pending resolution of the motion for class certification.
1. Anticybersquatting Consumer Protection Act (ACPA)
Defendants Ireit, Sedo, Oversee and Google have moved to dismiss the ACPA count. The court will, as necessary, address similar arguments raised by multiple defendants together.
The ACPA, 15 U.S.C. § 1125(d), was enacted in 1999 to combat cybersquatting, the "deliberate, bad-faith, and abusive registration of Internet domain names in violation of the rights of trademark owners." Virtual Works, Inc. v. Volkswagen of Am., Inc., 238 F.3d 264, 267 (4th Cir. 2001) (internal quotation marks and citation omitted). In order to state a claim under the ACPA, a plaintiff must allege that "(1) it had a distinctive or famous mark at the time the domain name was registered, (2) the defendant registered, trafficked in, or used a domain name that is identical or confusingly similar to plaintiff's mark, and (3) the defendant had a bad faith intent to profit from that mark." Flentye v. Kathrein, 485 F. Supp. 2d 903, 914 (N.D. Ill. 2007)(citing V'soske, Inc. v. Vsoske.com, No. 00 C 6099, 2001 WL 546567, at *6 (S.D.N.Y. May 23, 2001)).
The FAC alleges that Sedo maintained a database of seven million domain names of which three million are undeveloped parked domain names. The FAC also alleges that the Parking Company defendants (which includes Sedo and Oversee) "enter[ed] into agreements with Defendant Google and license [sic] to Defendant Google the rights to control, monitor, maintain, use and place advertising on all of the domains under the Parking Company's control, including Deceptive Domains."
According to Sedo and Oversee, the FAC characterizes them as "parking companies" and does not allege that they are the registrant or owner of any domain names or that they register domain names. As such, Sedo and Oversee assert that the plaintiffs have failed to state a claim under the ACPA. Bird v. Parsons, 289 F.3d 865, 870 (6th Cir. 2002)(because there was no allegation that certain defendants "registered a domain name, ... and liability for using a domain name can only exist for the registrant or that person's authorized licensee," the complaint was properly dismissed against those defendants because it "contains no allegation that ... [those defendants] are ... licensee[s]") (citing 15 U.S.C. § 1125(d) (1)(D)).
The plaintiffs allege that "Defendants taste*fn5 , register, license, own, traffic in, monetize and/or otherwise utilize and control Deceptive Domains that are identical and/or substantially similar to Lead Plaintiffs." FAC at ¶ 65. While the FAC does not specifically allege that Sedo or Oversee registered or owned any of the allegedly deceptive domain names, it identifies them as "parking companies." In turn, the FAC defines a "parking company" as "a company that aggregates numerous domain names from individual domain registrants and contracts with an advertising service to license and monetize those domain names." FAC at ¶ 83w. Moreover, the FAC alleges that "[a]fter Oversee/Snapnames takes control of the domain names, Oversee/Snapnames traffics in, monetizes, and/or sells the domain names using an auction system. . . ." FAC ¶ 209. It is plausible that these allegations fall under the ACPA's prohibition of "trafficking in," which is defined by the ACPA as engaging in "transactions that include, but are not limited to, sales, purchases, loans, pledges, licenses, exchanges of currency, and any other transfer for consideration or receipt in exchange for consideration," 15 U.S.C. § 1125(d)(1)(E). Thus, the court denies Sedo and Oversee's motion to dismiss the ACPA claim on this ground.
Referring to the allegation above that Oversee conducts auctions, Oversee argues that as an auction site, it does not "traffic in" domain names because it does not "directly" transfer or receive a property interest in any domain names. Ford Motor Co. v. Greatdomains, Inc., 177 F. Supp. 2d 635, 645 (E.D. Mich. 2001)(granting motion to dismiss against auctioneer because "[a]s an auctioneer, Great Domains does not transfer or receive for consideration the domain names that are sold over its website. Although it does provide a forum at which such transfers and receipts may take place, the property interests associated with each domain name remain with the person 'transferring' and pass directly to the person 'receiving,' thus bypassing Great Domains entirely.").
As an initial matter, the specifics of what Oversee does as an auction site (or, for that matter, in any other role) is a matter that is outside the four corners of the complaint as it has not been specifically alleged and, therefore, is not properly considered on a motion to dismiss. Moreover, as noted by the plaintiffs and as discussed above, the FAC alleges that the purported parking company defendants, of which Oversee is one, did more than just auction domain names: they also registered, licensed and sublicensed domain names, among other things. Thus, the motion to dismiss on this ground is denied. Flentye, 485 F. Supp. 2d at 914 ("at a minimum, Class Plaintiffs do allege that Defendants as a group registered the domain names at issue . . . , so the court cannot say that Kathrein could not be considered the registrant or an authorized licensee.")(citation omitted).
Nor is the court persuaded at this time by Sedo's argument that none of its parked domain names are identical or confusingly similar to any of the plaintiffs' marks. For example, in footnote 4 of its motion to dismiss, Sedo contends that "vulcano" is the Italian word for dictionary and therefore "a legitimate consideration is that vulcanogolf does not relate to Vulcan Golf or its products but to volcano golf or golfing in and around volcanoes." This type of factual determination is wholly inappropriate at the motion to dismiss stage.
The same goes for Oversee's argument that the plaintiffs' allegations negate the requisite bad faith intent. Specifically, Oversee asserts that liability under the ACPA requires that the purported wrongdoer have "a bad faith intent to profit from that mark." 15 U.S.C. § 1125(d)(1)(A). According to Oversee, because the FAC alleges that the defendants have online complaint systems and procedures whereby the defendant-company will investigate any alleged illegal infringement of trademarks in connection with the registration of domain names, see FAC ¶ 195, the requirement of bad faith is negated and the plaintiffs have pled themselves out of court. However, the next paragraph of the FAC alleges that the complaint systems are "illusory" and "mislead" the public into believing that the defendants do not support the purported deceptive domain scheme. FAC ¶ 196.
This allegation demonstrates that a factual dispute exists as to whether the defendants' complaint procedures are sufficient to negate the bad faith intent requirement. Any arguments about when and if any of the plaintiffs contacted or complained to Oversee about the alleged infringement of their trademarks should be raised later in the litigation, but cannot be resolved in a Rule 12(b)(6) motion to dismiss. Oversee's motion to dismiss the ACPA claim on this ground is denied.*fn6
Google contends that the ACPA cannot apply to it because it does not own or operate any of the allegedly infringing domain names. As noted above and by the parties, the ACPA imposes liability on one who "registers, traffics in, or uses" certain types of domain names. 15 U.S.C. § 1125(d). Google then refers to the statute, which states that "[a] person shall be liable for using a domain name under subparagraph (A) only if that person is the domain registrant or that registrant's authorized licensee," and argues that because the plaintiffs do not allege that Google has registered or is operating any of the allegedly infringing domain names, it cannot be liable under the ACPA. This argument, however, ignores that one can also be liable for, as discussed above, "trafficking in" a domain name. The FAC alleges that Google pays registrants for its use of the purportedly deceptive domain names, provides domain performance reporting, participates in the tasting of domain names, uses semantics technology to analyze the meaning of domain names and select revenue maximizing advertisements and controls and maintains that advertising. Given these allegations, Google's motion to dismiss the ACPA count is denied.
2. Trademark Infringement
Count IV of the FAC alleges trademark infringement under the Lanham Act, 15 U.S.C § 1114(1), which prohibits in relevant part the: use in commerce [of] any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive . . . .
In order to state a claim for trademark infringement under the Lanham Act, the plaintiffs must plead that (1) its mark is protectible, and (2) defendant's use of the mark is likely to cause confusion among consumers. Packman v. Chicago Tribune Co., 267 F.3d 628, 638 (7th Cir. 2001).
Sedo argues that Vulcan has no standing because it has not alleged a protectible interest in the allegedly deceptive domain name "vulcanogolf." However, the plaintiffs allege that Vulcan owns the Vulcan trademark and the "Vulcan Golf" tradename and that vulcanogolf.com violates Vulcan's trademark on that name. This is sufficient at the motion to dismiss stage. Promatek Industries, Ltd. v. Equitrac Corp., 300 F.3d 808, 812-13 (7th Cir. 2002)(affirming issuance of preliminary injunction based on plaintiff's Lanham Act claim where defendant used term "Copitrack" in its metatag because "by Equitrac's placing the term Copitrack in its metatag, consumers are diverted to its website and Equitrac reaps the goodwill Promatek developed in the Copitrak mark.").
Sedo also contends that the use of the prefix "vulcan" in another domain name does not infringe its trademark because the term "vulcan" is too common to trademark. Amerimax Real Estate Partners, Inc. v. RE/MAX Intern., Inc., 05 C 5300, 2006 WL 2794934, at *5 (N.D. Ill. Sept. 26, 2006)(granting plaintiff's request for declaratory judgment that its use of "max" does not infringe RE/MAX's trademark because "max" is too common to be protectible and because there is no likelihood of confusion). However, as noted by the plaintiffs, the Amerimax court did not analyze any of the fact-specific factors to determine whether a likelihood of confusion exists. Smith Fiberglass Products, Inc. v. Ameron, Inc., 7 F.3d 1327, 1329 (7th Cir. 1993)(listing seven factors a court is to consider when determining whether a likelihood of confusion exists). This court is simply not willing to engage in such an inquiry on the term "vulcan" at the motion to dismiss stage. See Educational Tours, Inc. v. Hemisphere Travel, Inc., No. 04 C 0559, 2004 WL 887417, at *2 (N.D. Ill. Apr. 26, 2004)("Defendants' argument that 'Educational Tours' is generic and thus unprotectable fails because it is procedurally inappropriate at this stage of the litigation.").
Sedo and Oversee assert that they have not "used" the plaintiffs' marks as required by the language of the Lanham Act.*fn7 Specifically, they contend that as a domain parking company, they do not own, register, or operate any of the allegedly infringing domain names. According to Sedo, it "is merely a facilitator providing a marketplace for the parking of domain names" and thus, it cannot have "used" the domain names at issue. Lockheed Martin Corp. v. Network Solutions, Inc., 985 F. Supp. 949, 957 (C.D. Cal. 1997)(because defendant's "acceptance of domain name registrations is connected only with the names' technical function on the Internet to designate a set of computers" and defendant "is not using the SKUNK WORKS mark in connection with the sale, distribution or advertising of goods and services," no "use" of the domain name occurred with respect to the Lanham Act). See also 1-800 Contacts, Inc. v. WhenU.Com, Inc., 414 F.3d 400 (2d. Cir. 2005)(where plaintiff alleged that "[the defendant] was infringing [the plaintiff's] trademarks, . . . by causing pop-up ads of [the plaintiff's] competitors to appear on a user's desktop when the user has accessed [the plaintiff's] website", the court reversed grant of a preliminary injunction concluding in part that "[the defendant] is using [the plaintiff's] website address precisely because it is a website address, rather than because it bears any resemblance to 1-800's trademark" and the defendant used the mark in its own directory, which was not accessible to user); Bird v. Parsons, 289 F.3d 865 (6th Cir. 2002)(affirming dismissal of trademark infringement and unfair competition claims against domain name registrar and auction company for domain names because no "use" as required under the relevant statutory provisions); Academy of Motion Picture Arts and Sciences v. Network Solutions, Inc., 989 F. Supp. 1276, 1279 (C.D. Cal. 1997)("mere registration of a domain name does not constitute a commercial use").
According to Sedo, which seeks to analogize itself with NSI in the Lockheed case, it "simply serves as a marketplace for domain name owners to list their domain names, and if the domain owner so chooses, Sedo can link the domain owner to advertisements offered by Google." Sedo Motion to Dismiss at 9. Oversee makes a similar argument. In the Lockheed case, the court noted that NSI simply registered domain names without further activity by NSI. Lockheed, 985 F. Supp. at 957. Here, however, the plaintiffs allege that the "Parking Company Defendants intentionally and knowingly register Deceptive Domains through the use of proprietary methods/tools by which they can determine the domain names that Internet users are attempting to access, but which domain names have not been registered by any entity, and they then register these recurring mishits or mistypes." FAC at ¶ 158. In addition, the FAC alleges that the "Parking Company Defendants cause popups or popunder advertisements on the Deceptive Domains and receive money for each popup or popunder displayed, in furtherance of the Deceptive Domain Scheme alleged." Id. at 161. Thus, pursuant to the allegations of the complaint, Sedo did more than "perform the automated, ministerial function of registering and cataloguing domain names," as it argues in its reply. See Lockheed, 985 F. Supp. at 957 ("[S]omething more than the registration of the name is required before the use of a domain name is infringing."). The same can be said for Oversee and the court declines Oversee's invitation to have it make legal determinations on a complicated set of facts that have yet to be determined.*fn8
The court notes that Sedo and Oversee's reliance on Lockheed and 1-800 Contacts is misplaced given that these cases were decided after a full evidentiary presentation to the court. Ultimately, Sedo and Oversee's position would require this court to go outside the pleadings to determine exactly what role they play in the complex world of domain name ownership, use, registration, and monetization. This the court will not do. The plaintiffs have alleged that Sedo and the other Parking Defendants transacted in and improperly profited from domain names that are deceptively similar to the plaintiffs' trademarks. Such statements sufficiently allege the "use" of a domain name to allow the infringement claims against Sedo and Oversee to move forward on this issue.
In the interest of completeness, the court notes that "use" has been interpreted broadly in other cases involving the internet and domain names. See, e.g., People for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359, 365 (4th Cir. 2001)("[the defendant] need only have prevented users from obtaining or using PETA's goods or services, or need only have connected the website to other's goods or services" to plead "use"); Buying for the Home, LLC v. Humble Abode, LLC, 459 F. Supp. 2d 310, 320-323 (D. N.J. 2006)(concluding that plaintiff satisfied "use" requirement of the Lanham Act "in that Plaintiff's mark was allegedly used to trigger commercial advertising which included a link to Defendants' furniture retailing website" and as such, "the [plaintiff's] mark was used to provide a computer user with direct access (i.e., a link) to Defendants' website through which the user could make furniture purchases"); 800-JR Cigar, Inc. v. GoTo.com, 437 F. Supp. 2d 273 (D. N.J. 2006)(on summary judgment, concluding that search engine defendant "used" the plaintiffs' trademarks as required by the Lanham Act where defendants "[1.] accept[ed] bids from those competitors of JR desiring to pay for prominence in search results [thus] . . . trad[ing] on the value of the marks. . . . [2.] rank[ed] its paid advertisers before any 'natural' listings in a search results list . . . . [and 3.] identifie[d] those of [the plaintiff's] marks which are effective search terms and market[ed] them to [the plaintiff's competitors]"); Google v. American Blind and Wallpaper Factory, Inc., No. C 03-05340 JF, 2005 WL 832398, at *5 (N.D. Cal. March 30, 2005)(after considering prior cases on "use" issue, denying motion to dismiss the trademark claims stating that "in light of the uncertain state of the law, the Court does not find Defendants' arguments sufficient to warrant dismissal of American Blind's counterclaims and third-party claims at the pleading stage."); Government Employees Insurance Company v. Google, Inc., 330 F. Supp. 2d 700, 703-04 (E.D. Va. 2004)(in suit alleging trademark infringement against operators of internet search engines which, among other things, sold advertising linked to plaintiff's trademarks, concluding that plaintiff had pled sufficient facts from which alleged trademark "use" where the "complaint clearly alleges that defendants use plaintiff's trademarks to sell advertising, and then link that advertising to the results of searches" or, in other words, "that defendants have unlawfully used [the plaintiff's] trademarks by allowing advertisers to bid on the trademarks and pay defendants to be linked to the trademarks"); OBH, Inc. v. Spotlight Magazine, Inc., 86 F. Supp. 2d 176, 186 (W.D.N.Y. 2000)("defendants' use of the mark is 'in connection with' the distribution or advertising of services, because it is likely to prevent or hinder Internet users from accessing plaintiffs' services on plaintiffs' own web site" . . . . in that "[p]rospective users of plaintiffs' services who mistakenly access defendants' web site may fail to continue to search for plaintiffs' web site due to confusion or frustration.")(internal citations omitted).
The FAC sufficiently pleads facts such that it is plausible that there was "use in commerce" and "in connection with the sale, offering for sale, distribution, or advertising of goods and services." As already noted, given the complex nature of the allegations in the FAC, the court simply cannot make a definitive ruling on the "use" issue without engaging in fact-finding, which is inappropriate at this stage of the litigation. See Rescuecom Corp. v. Computer Troubleshooters, USA, Inc., 464 F. Supp. 2d 1263, 1266-67 (N.D. Ga. 2005)(denying motion to dismiss on "use" issue of Lanham Act claim in similar context to the instant case stating that "[t]he Court's limited understanding of the matter suggests that this dispute does not ...