The opinion of the court was delivered by: Hon. Blanche M. Manning
Before the court is the plaintiffs' motion for class certification [#197-1]. For the reasons stated below, the motion is denied.
The court assumes familiarity with the factual background of this case. Briefly, 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., and John Does I-X.
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.
The court granted in part and denied in part the defendants' prior two motions to dismiss and ordered briefing on the class certification issue. The plaintiffs seek class certification on only four of the remaining claims, including the Anti-Cybersquatting Protection Act ("ACPA") claim, the contributory and vicarious infringement claims, and the unjust enrichment claim. The plaintiffs' original motion for class certification proposed the following class:
Any individual or owner of a mark whose personal name or mark is identical or confusingly similar to a parked domain name that has been registered, trafficked in or used for commercial gain, by one or more of the Defendants, during the period of time January 1, 2002 through the present.
The plaintiffs contended that the class could be further subdivided into three proposed subclasses. However, after the defendants filed their consolidated motion in opposition to the plaintiffs' proposed classes, the plaintiffs revised their proposed classes in their reply. Because it was not clear to the court what classes the plaintiffs were proposing, the court ordered the plaintiffs to file a statement clarifying what their proposed classes were. The plaintiffs filed their clarifying statement, in which they appear to propose the following class:
Any individual or owner of a mark whose personal name or mark is identical to or differs from a domain name parked and advertised on by one or more of the Defendants only by addition of a pre-pending "www" or "http" or post-pending "com."
In addition, the plaintiffs propose three subclasses (as revised in their reply brief). The plaintiffs refer to the first subclass as the "doubly-registered subclass" and it is defined as follows:
Any owner of a mark appearing on the principal or secondary registry of the United States Patent and Trademark Office who has a registered domain name containing that mark (a "mark owner's domain name"), and whose "mark owner's domain name" differs from a domain name parked and advertised on by one or more of the Defendants only by addition of a pre-pending "www" or "http" or post-pending "com."
The other two proposed subclasses are defined as follows:
Any owner of an unregistered mark who has registered a domain name containing that mark (a "mark owner's domain name"), and whose "mark owner's domain name differs from a domain name parked and advertised on by one or more of the Defendants only by addition of a pre-pending "www" or "http" or post-pending "com."
Any individual who has registered a domain name containing his or her personal name (a "personal domain name"), and whose "personal domain name" differs from a domain name parked and advertised on by one or more of the Defendants only by addition of a pre-pending "www" or "http" or post-pending "com."
"In order to show that class certification is justified, [the plaintiffs] must satisfy the four requirements of Rule 23(a) of the Federal Rules of Civil Procedure." Williams v. Chartwell Financial Services, Ltd., 204 F.3d 748, 760 (7th Cir. 2000). Rule 23(a) provides that a class may be certified if: (1) the class is so numerous that joinder of all members is impracticable; (2) there are questions of law or fact common to the class; (3) the claims or defenses of the representative parties are typical of the claims or defenses of the class; and (4) the representative parties will fairly and adequately protect the interests of the class. Fed. R. Civ. P. 23(a). The court must also ascertain whether the plaintiffs meet one of the requirements of Rule 23(b) of the Federal Rules of Civil Procedure, which states that:
A class action may be maintained if Rule 23(a) is satisfied and if:
(1) prosecuting separate actions by or against individual class members would create a risk of:
(A) inconsistent or varying adjudications with respect to individual class members that would establish incompatible standards of conduct for the party opposing the class; or
(B) adjudications with respect to individual class members that, as a practical matter, would be dispositive of the interests of the other members not parties to the individual adjudications or would substantially impair or impede their ability to protect their interests;
(2) the party opposing the class has acted or refused to act on grounds that apply generally to the class, so that final injunctive relief or corresponding declaratory relief is appropriate respecting the class as a whole; or
(3) the court finds that the questions of law or fact common to class members predominate over any questions affecting only individual members, and that a class action is superior to other available methods for fairly and efficiently adjudicating the controversy. The matters pertinent to these findings include:
(A) the class members' interests in individually controlling the prosecution or defense of separate actions;
(B) the extent and nature of any litigation concerning the controversy already begun by or against class members;
(C) the desirability or undesirability of concentrating the litigation of the claims in the particular forum; and
(D) the likely difficulties in managing a class action.
"Courts have broad discretion in determining whether the class certification requirements of Rule 23 have been met." Redmon v. Uncle Julio's of Illinois, Inc., 249 F.R.D. 290, 293-94 (N.D.Ill. 2008)(citation and internal quotation marks omitted). Finally, "a district court may certify a class only if, after 'rigorous analysis,' it determines that the party seeking certification has borne its burden." In re Abbott Laboratories Norvir Anti-Trust Litigation, Nos. C 04-1511 CW, C 04-4203 CW, 2007 WL 1689899, at *2 (N.D. Cal. June 11, 2007)(quoting General Tel. Co. v. Falcon, 457 U.S. 147, 158-61 (1982)).
Prior to their arguments regarding the express elements of Rule 23, the parties engage in an extensive discussion about the defendants' position that the class is unascertainable. "An implicit prerequisite to class certification is that a sufficiently definite class must exist." Wallace v. Chicago Housing Authority, 224 F.R.D. 420 (N.D. Ill. 2004) (citation omitted). "A sufficiently definite class exists 'if its members can be ascertained by reference to objective criteria." Id. (citation omitted). Further, "[t]he class definition must be sufficiently precise to make it 'administratively feasible for the Court to determine whether a particular individual is a member of the proposed class.'" Id. (citation omitted). However, because the court has concluded that the class cannot be certified under Rule 23(b), it need not address the parties' arguments regarding ascertainment of the proposed class and subclasses.
The defendants argue that the plaintiffs' request for class certification fails under Rule 23(a). Specifically, they contend that the named plaintiffs are atypical of the class under Rule 23(a)(3) and inadequate class representatives for purposes of Rule 23(a)(4). Even though the defendants do not challenge numerosity and commonality, the court must still ascertain whether these requirements have been met. Fed. R. Civ. P. 23(c); Davis v. Hutchins, 321 F.3d 641, 649 (7th Cir. 2003).
Rule 23(a)(1) requires that a class be so numerous that joinder of all its members is impracticable. Fed. R. Civ. P. 23(a)(1). The defendants do not challenge this element of Rule 23(a) and given the parties' apparent agreement that the class could number in the millions, the court concludes that the numerosity requirement has been satisfied.
"A common nucleus of operative fact is usually enough to satisfy the commonality requirement of Rule 23(a)(2)." Rosario v. Livaditis, 963 F.2d 1013, 1018 (7th Cir. 1992)(citation omitted). In the instant case, the common nucleus of operative facts is whether the defendants engaged in the purported deceptive domain scheme in order to improperly benefit from the plaintiffs' marks or personal names. Thus, this element of Rule 23(a) is satisfied.
c. Typicality and Adequacy
The typicality element under Rule 23(a)(3) requires a determination "whether the named representatives' claims have the same essential characteristics as the claims of the class at large." De La Fuente v. Stokely-Van Camp, Inc., 713 F.2d 225, 232 (7th Cir. 1983). The representatives' claims are "typical if [they] arise[ ] from the same event or practice or course of conduct that gives rise the claims of the other class members and [their] claims are based on the same legal theory." Id. "The typicality requirement may be satisfied even if there are factual distinctions between the claims of the named plaintiffs and those of other class members." Id. "Thus, similarity of legal theory may control even in the face of differences of fact." Id.
Rule 23(a)(4) requires that class representatives must "fairly and adequately protect the interests of the class." Fed. R. Civ. P. 23(a)(4). In order to satisfy the requirements of Rule 23(a) (4), the class representative must "possess the same interest and suffer the same injury as the class members." Uhl v. Thoroughbred Tech. & Telecomms., Inc., 309 F.3d 978, 985 (7th Cir. 2002). With respect to adequacy, the court evaluates "'the adequacy of the named plaintiff's counsel, and the adequacy of representation provided in protecting the different, separate, and distinct interest' of the class members." Retired Chicago Police Ass'n v. City of Chicago, 7 F.3d 584, 598 (7th Cir. 1993)(citation omitted). "A class is not fairly and adequately represented if class members have antagonistic or conflicting claims." Rosario, 963 F.2d at 1018 (citation omitted). In addition, the plaintiffs' attorneys must be qualified, experienced, and generally able to conduct the proposed litigation.
Because the parties address these two factors together, the court will also.
As an initial matter, the defendants do not challenge the adequacy of plaintiffs' counsel and the resumes attached to the plaintiffs' motion for class certification indicate that plaintiffs' counsel has significant experience in class action litigation.
The defendants assert that the named plaintiffs are atypical because intra-class conflicts exist. According to the defendants, because there are marks which are registered multiple times by different owners for different types of goods, intra-class conflicts would develop in order to establish who has rights to any damages awarded for any infringement by a parked domain name. For example, the defendants note that the mark "EARTH" is registered to Maynard Designs for vitamins, Niagara Conservation Corporation for shower heads, and the Escuela de Agricultura de la Region Tropical Humeda for bananas. See Defendants' Consolidated Opposition at 32-33. As a result, defendants argue, the class members would have disputes between themselves as to which of them has the right to recover for any use of the word "earth" in a domain name during the relevant period. In addition, the defendants contend that because one ...