Vulcan Golf, LLC v. Google Inc. et al

Filing 107

REPLY by Defendant Oversee.Net to motion to dismiss 98 (Carter, Janelle)

Vulcan Golf, LLC v. Google Inc. et al

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UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF ILLINOIS EASTERN DIVISION VULCAN GOLF, LLC, JOHN B. SANFILIPPO & SON, INC., BLITZ REALTY GROUP, INC., and VINCENT E. "BO" JACKSON, Individually And On Behalf of All Others Similarly Situated, Lead Plaintiffs, v. GOOGLE INC., OVERSEE.NET, SEDO LLC, DOTSTER, INC., AKA REVENUEDIRECT.COM, INTERNET REIT, INC. d/b/a IReit, INC. and JOHN DOES I-X, Defendants. ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) ) )

No. 07 CV 3371 Honorable Blanche M. Manning Magistrate Judge Geraldine Soat Brown

DEFENDANT OVERSEE.NET'S SEPARATE REPLY BRIEF IN SUPPORT OF ITS MOTION TO DISMISS FIRST AMENDED CLASS ACTION COMPLAINT

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TABLE OF CONTENTS Page(s) INTRODUCTION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1 ARGUMENT ............................................................................................................................. 2 I. The Court Should Dismiss Plaintiffs' Trademark Infringement Claims Because Plaintiffs Failed to Allege Use Or Causation. .................................................................. 2 A. B. II. III. Plaint iffs Failed To Allege That Oversee Used Plaintiffs' Marks As Required Under the Lanham Act. ........................................................................ 2 Plaint iffs Have Not Alleged That Oversee Caused A Likelihood of Confusion as Required Under The Lanham Act. .................................................. 6

The Court Should Dismiss Plaintiffs' Dilution Claim Because Plaintiffs Failed to Allege That Their Marks Are Famous. .......................................................................... 10 The Court Should Dismiss Plaintiffs' Contributory Trademark Infringement Claim Because Plaintiffs Did Not Sufficiently Allege The Required Elements. ....................... 11

CONCLUSION ........................................................................................................................ 13

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TABLE OF AUTHORITIES CASES 1-800-Contacts v. WhenU.com, Inc., 414 F.3d 400 (2d Cir. 2005).......................................................................................3, 4, 5, 7 Bird v. Parsons, 289 F.3d 865 (6th Cir. 2002)......................................................................................3, 4, 5, 6 Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999)........................................................................................... 7, 8 Educational Tours, Inc. v. Hemisphere Travel, Inc., No. 04 C 0559, 2004 WL 887417 (N.D. Ill. April 26, 2004).............................................. 5, 6 GEICO v. Google, Inc., 330 F. Supp. 2d 700 (E.D. Va. 2004) .................................................................................. 12 Holiday Inns, Inc. v. 800 Reservation, Inc., 86 F.3d 619 (6th Cir. 1996)........................................................................................2, 7, 8, 9 Jews for Jesus v. Brodsky, 993 F. Supp. 282 (D.N.J. 1998)......................................................................................... 5, 6 Lockheed Martin Corp. v. Network Solutions, Inc., 985 F. Supp. 949 (C.D. Cal. 1997) ...............................................................................3, 4, 12 Panavision Intern., L.P. v. Toeppen, 141 F.3d 1316 (9th Cir. 1998)........................................................................................... 8, 9 People for Ethical Treatment of Animals, Inc. v. Doughney, 113 F. Supp. 2d 915 (E.D. Va. 2000) ................................................................................ 5, 6 S. Indus. v. Diamond Multimedia Sys., 991 F. Supp. 1012 (N.D. Ill. 1998)...................................................................................... 10 Syndicate Sales, Inc. v. Hampshire Paper Corp., 192 F.3d 633 (7th Cir. 1999)............................................................................................... 10 Trans Union LLC v. Credit Research, Inc., 142 F. Supp. 2d 1029 (N.D. Ill. 2001) ................................................................................. 10 Watts v. Network Solutions, Inc., No. 99-2350, 1999 WL 994012 (7th Cir. Oct. 27, 1999) ................................................11, 12

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STATUTES 15 U.S.C. § 1114 (1)................................................................................................................... 2 15 U.S.C. § 1125(c)(2)(A) ...................................................................................................10, 11 ILCS 505/2 ................................................................................................................................ 1

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DEFENDANT OVERSEE.NET'S SEPARATE REPLY BRIEF IN SUPPORT OF ITS MOTION TO DISMISS FIRST AMENDED CLASS ACTION COMPLAINT Defendant Oversee.net ("Oversee") submits this reply memorandum in further support of its motion to dismiss Counts III, IV, V, VI, IX, X, and XI of Plaintiffs' Amended Complaint pursuant to Fed. R. Civ. P. 12(b)(6). Oversee also joins in the Consolidated Reply Brief in Support of Defendants' Motions to Dismiss Amended Class Action Complaint with respect to the remaining claims (Counts I, II, VII (as to ILCS 505/2), VIII, XII, XIII, and XIV). INTRODUCTION Plaint iffs' trademark-related claims against Oversee cannot stand because Plaintiffs failed to allege that Oversee used Plaint iffs' marks in a way that triggers Lanham Act liability or caused any likelihood of confusion. Plaintiffs mischaracterize the law and rely upon cases with little factual similarity to Plaintiffs' allegations against Oversee. Plaintiffs' allegations that Oversee registered deceptive domain names and permitted advertising to appear on the parked domains fall far short of the action required to establish trademark "use" to trigger liability under the Lanham Act. Furthermore, Plaintiffs' allegations that Oversee benefited from consumers' preexisting confusion belies any allegation that Oversee caused any likelihood of confusion. Accordingly, the Court should dismiss Plaintiffs' trademark-related claims against Oversee. Plaintiffs' dilution claim also fails not only because they have not alleged relevant use but also because they have not alleged that their marks are famous. Indeed, as shown below, Plaintiff Blitz Realty pleaded facts in direct contradiction of any argument that its mark is famous as defined by the Lanham Act. Moreover, Plaintiffs' contributory trademark infringement claim should be dismissed for failure sufficiently to allege an underlying claim for

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trademark infringement and to allege facts that Oversee intentionally induced infringement of Plaintiffs' mark or continually supplied a product to one that Oversee knew infringed Plaintiffs' marks. For the reasons discussed below, the Court should dismiss Plaintiffs' dilution and contributory trademark infringement claims. ARGUMENT I. The Court Should Dismiss Plaintiffs' Trademark Infringement Claims Because Plaintiffs Failed to Allege Use Or Causation. The court should dismiss Plaintiffs' trademark infringement claims because Plaint iffs have failed to allege that Oversee (1) used Plaint iffs' marks in commerce in connection with goods and services or (2) caused a likelihood of confusion with respect to the source of sponsorship of goods or services. Plaintiffs' failure to plead either of these elements is fatal to their trademark-related claims, and thus, the Court should dismiss these claims. A. Plaintiffs Failed To Allege That Oversee Used Plaintiffs' Marks As Required Under the Lanham Act. Plaint iffs' claims of trademark infringement against Oversee cannot stand without adequately pleading that Oversee used Plaintiffs' marks pursuant to the Lanham Act. See 15 U.S.C. § 1114 (1). Plaintiffs rely upon cases that do not apply to this case and do not establish that there can be trademark "use" under the facts alleged by Plaintiffs. Plaintiffs have mischaracterized the law and have relied upon cases in which the factual relevance is tenuous at best. The use of a protected trademark by a defendant "is a prerequisite to the finding of a Lanham Act Violation." Holiday Inns, Inc. v. 800 Reservation, Inc., 86 F.3d 619, 626 (6th Cir. 1996); see 15 U.S.C. § 1114 (1) (stating that trademark infringement requires that a defendant use the plaintiffs' marks in commerce in connection with goods and services). Although trademark "use" may extend to the dissemination of information in certain cases, as 2

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argued by Plaintiffs (Pl. Resp. Br. at 29), Plaintiffs have not alleged that Oversee disseminated any information regarding Plaintiffs' marks. The Sixth Circuit held in Bird v. Parsons, 289 F.3d 865, 879 (6th Cir. 2002), that the registration or sale of a domain name does not constitute trademark "use." In Bird, the plaintiff alleged that the defendants infringed its registered mark "Financia" by registering the domain name "efinancia.com" and posting the domain name for auction the day after it was registered. Finding that the defendants' registration of a domain name incorporating the plaintiffs' mark and the subsequent auction of that domain name did not constitute trademark "use," the Bird court approved the analysis of Lockheed Martin Corp. v. Network Solutions, Inc., 985 F. Supp. 949, 954-55 (C.D. Cal. 1997). The Bird court, therefore, affirmed the dismissal of the plaintiff's claim of trademark infringement for failure to allege trademark "use." Plaint iffs have mischaracterized the key holding of Lockheed Martin, a case with vast similarities to the Plaintiffs' allegations in this case. In Lockheed Martin Corp. v. Network Solutions, Inc., Lockheed Martin brought a trademark infringement action against NSI, claiming that NSI infringed its mark 'SKUNK WORKS' by registering several domain names, including: skunkwerks.com; skunkworx.com; theskunkworks.com. 985 F. Supp. at 954-55. NSI is a domain name registrar which registers domain names and connects the domain names to the domain name servers. 985 F. Supp. at 953. Finding that "something more than the registration of the name is required before the use of a domain name is infringing," the court held that there could be no trademark use or trademark infringement. 985 F. Supp. 957-58. Furthermore, in 1-800-Contacts v. WhenU.com, Inc., 414 F.3d 400, 404 (2d Cir. 2005), Defendant WhenU provided a software program which caused pop-up advertisements to appear when an Internet user typed keywords, website addresses, or website address fragments

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that corresponded with the same on the software program's internal directory. Plaintiff 1-800-Contacts alleged that WhenU infringed its mark by delivering competitor advertisements to Internet users that intentionally accessed its website. 414 F.3d at 405. Reasoning that WhenU did not "use" plaintiff's mark by placing its mark on goods and services in an effort to pass them off as being authorized by 1-800-Contacts, the Second Circuit held that WhenU's inclusion of 1-800-Contacts' mark on its software directory did not constitute prohibited "use" of the mark under the Lanham Act. 414 F.3d at 408. Bird, 1-800-Contacts, and Lockheed Martin are most analogous to this case because Plaintiffs have alleged conduct by Oversee similar to that of the defendants in Bird, 1-800-Contacts, and Lockheed Martin. Here, Plaintiffs allege that Defendants engaged in a "Deceptive Domain Scheme" to display pop-up and pop-under advertisements on the alleged Deceptive Domains. (Am. Compl. ¶¶ 166, 348.) As 1-800-Contacts and Lockheed Martin held, the mere acts of registering allegedly deceptive domain names and utilizing protected marks in a software program that causes relevant pop-up advertisements to appear or putting the allegedly deceptive domain name up for auction is not enough to constitute trademark "use." 1-800-Contacts, 414 F.3d at 408; Bird, 289 F.3d at 879; Lockheed Martin, 985 F. Supp. at 957-58. Plaintiffs have not alleged that Oversee's actions went any further than the actions by the defendants in Bird, Lockheed Martin, or 1-800-Contacts. As in Bird and Lockheed Martin, Plaintiffs allege that Oversee registered domain names and entered into a license with the domain registrants to permit advertising on the domains. (Am. Compl. ¶ 148). Also, as in 1-800-Contacts, Plaintiffs allege that Oversee agreed with Google to allow Google to place advertising on the domains. (Am. Compl. ¶ 149.) Here, the alleged actions of Oversee fall short

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of even the permissible conduct of WhenU in 1-800-Contacts. In 1-800-Contacts, WhenU provided a software program that placed marks and other keywords in its directory to cause relevant advertising to pop up when the Internet user intentionally accessed 1-800-Contacts' website. Plaintiffs, here, have not alleged that Defendants placed advertising on Plaintiffs' websites; they allege advertising only on parked domains. (See Am. Compl. ¶¶ 147-48.) Plaint iffs' response to the directly on-point case law of the Second Circuit in 1-800-Contacts and the Sixth Circuit in Bird is to cite to distinguishable cases, including Educational Tours, Inc. v. Hemisphere Travel, Inc., No. 04 C 0559, 2004 WL 887417 at *1 (N.D. Ill. April 26, 2004); People for Ethical Treatment of Animals, Inc. v. Doughney, 113 F. Supp. 2d 915 (E.D. Va. 2000); Jews for Jesus v. Brodsky, 993 F. Supp. 282 (D.N.J. 1998). Unlike Plaintiffs' allegations, in Jews for Jesus, at 993 F. Supp. at 290-91, and People for Ethical Treatment of Animals, 113 F. Supp. 2d at 918, the respective defendants registered and operated websites with domain names identical to the plaintiffs' marks for the express purpose of diverting Internet users from the plaintiffs' websites. The defendants further disseminated information on their websites that was disparaging to the plaintiffs. Id. By contrast, Plaintiffs have not alleged that Oversee took any actions to disseminate information, disparaging or otherwise, regarding the Plaintiffs' marks. Rather, it is merely alleged that the Parking Company Defendants registered similar domain names and allowed relevant advertising to be posted on such domains. (Am. Co mpl. ¶¶ 147-49.) Moreover, in a case cited by Plaintiffs, Educational Tours, Inc., 2004 WL 887417 at *1, the plaintiff provided student tours and travel services and the defendant competed in the same industry. (See Pl. Resp. Br. at 30.) The plaintiff registered the domain name "et-educationaltours.com," which incorporated its trademark. Id. The defendants subsequently

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registered the following domain names: "et-educationaltours.net," "et-educationaltours.us," "e-educationaltours.com," and "e-educationaltours.net." Id. Similar to Jews for Jesus and People for Ethical Treatment of Animals, the defendant in Educational Tours intent ionally diverted Internet users from the plaintiffs' website and offered a competing service. Thus, the facts of Educational Tours, Inc. are very different. Plaintiffs do not allege that Oversee maintains websites at the domains offering services that compete with Plaintiffs. They allege only that Defendants permit advertising on parked domains. (Am. Compl. ¶¶ 147-49.) Accordingly, Plaintiffs failed to allege that Oversee used Plaintiffs' marks in commerce in connection with goods and services as required under the Lanham Act. Oversee is a parking company that allows for the registration of domain names by third parties. Mere registration or sale of a domain name does not constitute trademark "use." Bird v. Parsons, 289 F.3d 865, 879 (6th Cir. 2002). Even if Plaintiffs' allegations that Oversee entered an agreement with (1) domain registrants for the right to control, maintain, and place advertising on their domains and (2) Google to license the right to control, maintain, and place advertising on the domains in Oversee's control (Am. Compl. ¶¶148-49) could be taken as true, such actions do not constitute "use" as required by the Lanham Act. Accordingly, Plaintiffs cannot meet the requirement that Oversee used Plaintiffs' marks in commerce in connection with goods and services. B. Plaintiffs Have Not Alleged That Oversee Caused A Likelihood of Confusion as Required Under The Lanham Act. The Court should also dismiss Plaintiffs' trademark claims against Oversee because Plaintiffs have failed to allege that Oversee caused a likelihood of confusion with respect to the source of sponsorship of goods or services. (See Oversee Br. at 5.) Plaint iffs attempt to negate this failure by erroneously stating that Oversee is "wrong" and that Oversee's 6

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"reliance on Holiday Inns is misplaced." (Pl. Resp. Br. at 33.) Plaint iffs, however, have no valid support for these contentions. Plaintiffs' response fails to recognize that "use" and "likelihood of confusion" are, in fact, "distinct elements of a trademark infringement claim." 1-800 Contacts, Inc. v., 414 F.3d at 412. As such, Oversee properly and fully addressed Plaint iffs' failure to allege "use" in a prior section (Oversee Br. at 2-5) and, therefore, did not attempt to "divert attention away" from the issue of "use." The causation element is independent from "use" and deserves separate analysis, but Plaintiffs avoid it. When they do turn to causation, Plaintiffs then mis characterize the case law on causation in their argument that "courts have considered and rejected the Holiday Inns case as a basis for finding no likelihood of confusion in connection with Internet websites." (Pl. Resp. Br. at 34-35.) Plaint iffs state that "in Brookfield, the Ninth Circuit expressly rejected Holiday Inns..." (Pl. Resp. Br. at 35.) That is false. In Brookfield, the Ninth Circuit expressly stated that its "conclusion comports with Holiday Inns." Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1065 (9th Cir. 1999). The Ninth Circuit merely distinguished Brookfield from Holiday Inns, explaining that "unlike the defendant in Holiday Inns, however, [the Brookfield defendant] was not a passive figure; instead, it acted affirmatively in placing [the plaintiff]'s trademark in the metatags of its web site, thereby creating the initial interest confusion." Id. (emphasis in original). The Brookfield court compared using another's trademark in metatags to "posting a sign with another's trademark in front of one's store." Id. at 1064. Similarly, the Holiday Inns court held that if the defendant had promoted the commonly misdialed number in connection with the plaintiff's trademark, the defendant would have been

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responsible for creating any resulting confusion. Holiday Inns, Inc. v. 800 Reservation, Inc., 86 F.3d 619, 624, 625 (6th Cir. 1996). Plaintiffs do not and cannot allege that Oversee promoted the challenged domains, placed Plaintiffs' protected marks in metatags or in any other manner acted affirmatively in directing Plaintiffs' customers to the challenged domains. Plaintiffs have done no more than claim that Oversee benefited from consumers' own, self-caused, typographical errors, as did the defendant in Holiday Inns. As the Brookfield court concluded, such allegations are distinguishable from the Brookfield defendant's affirmative creation of confusion. Accordingly, Oversee's reliance on Holiday Inns is not only proper but even supported by the Brookfield holding. Plaint iffs engage in a series of further distractions, summarizing red herrings to divert attention from their causation obstacle. Thus, Plaintiffs misinterpret the Ninth Circuit's distinction of Holiday Inns in Panavision Intern., L.P. v. Toeppen, 141 F.3d 1316 (9th Cir. 1998). (See Pl. Resp. Br. at 35.) The first problem with Plaintiffs' reliance on Panavision is that the Panavision court's discussion of Holiday Inns centered on whether the defendant engaged in "commercial use" under a dilution claim, not whether the defendant caused a likelihood of confusion under a trademark infringement claim. Panavision Intern, 141 F.3d at 1316. Even if Panavision were relevant, the Panavision court distinguished Holiday Inns because, unlike the Holiday Inns defendant, the Panavision defendant did not capitalize on any misdialing or mistyping. Rather, the Panavision defendant attempted to sell a domain name, panavision.com, that exactly mirrored the plaintiff's corporate name, Panavision, thereby "preventing [the plaintiff]...from doing business on the Internet under their trademarked names unless they pay his fee." Id. at 1325. The Ninth Circuit concluded that such "use" would cause

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potential customers of Panavision to be "discouraged if they cannot find [the plaintiff]'s web page by typing in `Panavision.com.'" Id. at 1327. Thus, according to the Ninth Circuit, Holiday Inns would have been more analogous had that defendant used the actual vanity number "1-800-Holiday" or the domain name "HolidayInns.com," because a user would expect to contact Holiday Inns or retrieve the Holiday Inns' web page. Id. at 1325. The Holiday Inns defendant used a misdialing of a vanity number, however, similar to the mistyping of a domain name.1 The Ninth Circuit found this distinguishable from the Panavision defendant's attempt to sell a domain name that directly corresponded to the plaintiff's corporate name. The Panavision court's distinguishing of the Holiday Inns' holding, therefore, implied no rejection of Holiday Inns, and especially not on the causation issue. Plaint iffs also argue that Oversee's reliance on Holiday Inns is flawed because this state uses a seven-factor test to assess likelihood of confusion. (Pl. Resp. Br. at 33, n. 15.) Contrary to Plaintiffs' argument, Oversee's reliance on Holiday Inns is not at odds with this circuit's method of assessing likelihood of confusion. Oversee simply contends that a likelihood of confusio n analysis is irrelevant because (once again) Plaintiffs have failed to adequately allege that Oversee caused any potential likelihood of confusion. See Holiday Inns, 86 F.3d at 626 (holding that a likelihood of confusion test is "irrelevant" upon the finding that the defendant did not create the confusion). Finally, Plaintiffs assert that they have alleged initial interest confusion by the general public. (Pl. Resp. Br. at 35.) Again, the issue is moot because Plaintiffs have failed to allege that Oversee caused any potential confusion. Additionally, this circuit analyzes initial interest confusion as a substitute for "actual confusion," which is merely one factor in the seven1

The Ninth Circuit has recognized that "a domain name is similar to a `vanity number' that identifies its source." Panavision, 141 F.3d at 1325

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factor test used to assess likelihood of confusion. See Trans Union LLC v. Credit Research, Inc., 142 F. Supp. 2d 1029, 1044 (N.D. Ill. 2001). Plaintiffs failed to plead that Oversee caused a likelihood of confusio n with respect to the source of sponsorship of goods or services. Accordingly, the Court should dismiss Plaintiffs' trademark-related claims. II. The Court Should Dismiss Plaintiffs' Dilution Claim Because Plaintiffs Failed to Allege That Their Marks Are Famous. In addition to their failure to allege that Oversee used Plaintiffs' marks commercially in commerce, Plaintiffs failed to sufficiently allege that their marks are famous. Under the Lanham Act, "a mark is famous if it is widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark's owner." 15 U.S.C. § 1125(c)(2)(A). While Plaintiffs cite several paragraphs in their Amended Complaint as sufficiently alleging fame (Pl. Resp. Br. at 39), those paragraphs are inadequate to plead fame. It is not enough to allege that the marks are distinctive. To plead a valid claim of dilution, Plaintiffs must allege that their marks are famous--not merely distinctive. Syndicate Sales, Inc. v. Hampshire Paper Corp., 192 F.3d 633, 639 (7th Cir. 1999). Specifically, Plaintiffs Vulcan Golf and John B. Sanfilippo & Son have failed to allege nationwide fame. S. Indus. v. Diamond Multimedia Sys., 991 F. Supp. 1012, 1022 (N.D. Ill. 1998) (holding that plaintiff's mark is not famous, noting plaintiff never even alleges in its complaint that its mark is "famous"). Plaint iffs have alleged that these marks are "unique," "distinctive," and "widely known and recognized." (Am. Compl. ¶¶ 24, 25, 33, 34.) Yet, Plaintiffs fail to allege that any of their marks, other than Bo Jackson and Blitz Realty, are famous. (Am. Compl. ¶¶ 47, 61-62.)

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Alt hough Plaintiff Blitz Realty alleged that its mark is famous, Plaintiff Blitz Realty has pleaded itself out of court with regard to its dilution claim by admitting that its fame is limited to Northern Illinois. (Am. Compl. ¶¶ 44, 47.) Plaintiffs have alleged that Plaintiff Blitz Realty's marks are "widely known and recognized among the community in Northern Illinois." (Am. Compl. ¶ 44.) A claim for dilution requires that the mark at issue be nationally famous, or "widely recognized by the general consuming public of the United States." 15 U.S.C. § 1125(c)(2)(A). Plaintiffs have, therefore, admitted that Blitz Realty's marks are not famous as defined by the Lanham Act. Therefore, the Court should dismiss Plaintiffs' dilution claim. III. The Court Should Dismiss Plaintiffs' Contributory Trademark Infringement Claim Because Plaintiffs Did Not Sufficiently Allege The Required Elements. Contributory infringement requires a showing that "a manufacturer or distributor (1) intentionally induces another to infringe a trademark or (2) continues to supply a product to one whom it knows or has reason to know is engaging in trademark infringement." Watts v. Network Solutions, Inc., No. 99-2350, 1999 WL 994012 at *2 (7th Cir. Oct. 27, 1999). Plaintiffs have not sufficiently alleged the first prong that Oversee intentionally induced another to infringe on a trademark. Plaintiffs argue that the Amended Complaint alleges that each Defendant "intentionally cooperates in transactions" and Defendants "encourage domain registrant to procure Deceptive Domains." (Pl. Resp. Br. at 45.) Indeed, the terms "encourage" and "cooperate" are not synonyms for the term "induce."2 Plaint iffs' Amended Complaint lacks any allegations that Oversee intentionally induced any entity to infringe Plaintiffs' marks. Furthermore, Plaintiffs have failed adequately to allege the second prong that Oversee "continues to supply a product knowing that the recipient is using the product to engage

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Merriam Webster's Online Thesaurus provides the following definitions for the term induce: (1) "to be the cause of" or (2) "to cause (someone) to agree with a belief or course of action by using arguments or earnest requests." Merriam Webster's Online Thesaurus, http://www.m-w.com/thesaurus/induce.

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in trademark infringement." Watts, 1999 WL 994012 at *2. A finding of contributory infringement is extremely rare when the defendant is a service provider, rather than a seller of products, and requires that the defendant directly control and monitor the third-party infringer. Lockheed Martin Corp., 194 F.3d at 984. Plaintiffs inappropriately rely on GEICO, which stands for the very same proposition as Lockheed Martin, that there must be a showing that the defendant monitors and controls the third-party infringer. GEICO v. Google, Inc., 330 F. Supp. 2d 700 (E.D. Va. 2004) ("The claim that [the defendant] monitors and controls the third-party advertisements is sufficient to plead the actual or constructive knowledge required to allege contributory infringement.") In this case, however, Plaintiffs have not alleged that Oversee monitors and controls Google's advertisements. Rather, Plaintiffs allege only that the Parking Companies licensed to Google the right to control, monitor, maintain, use and place advertising. (Am. Compl. ¶ 149.) The allegation that Oversee licensed to Google the right to place advertising on the domains is hardly the same as having the right to control Google's advertising. There are no allegations that Oversee itself controlled or monitored any advertising on the parked domains. Therefore, the Court should dismiss Plaintiffs' claim for contributory trademark infringement.

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CONCLUSION For the foregoing reasons, Defendant Oversee respectfully requests that this Court dismiss Counts III, IV, V, VI, IX, X, XI of Plaintiffs' First Amended Class Action Complaint with prejudice. Respect fully submitted, OVERSEE.NET, INC. Dated: November 13, 2007 By: /s/ Janelle M. Carter One of Its Attorneys

Ronald Y. Rothstein Janelle M. Carter Winston & Strawn LLP 35 West Wacker Drive Chicago, Illinois 60601 Tel: [phone] Fax: [phone] Email: [e-mail] Steven Atlee Winston & Strawn LLP 333 Grand Avenue Los Angeles, CA 90071 Tel: [phone] Fax: [phone] Andrew Bridges Winston & Strawn LLP 101 California Street San Francisco, CA 94111 Tel: [phone] Fax: [phone]

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CERTIFICATE OF SERVICE I hereby certify that on November 13, 2007, a true and correct copy of the foregoing was served in accordance with Rule 5, Federal Rules of Civil Procedure, on the following: Mark Anthony Bulgarelli Robert M. Foote Stephen William Fung Foote, Meyers, Mielke & Flowers, LLC 28 North First Street, #2 Geneva, Illinois 60134 Jonathan M. Cyrluk Joseph J. Duffy Mariah E. Moran Stetler & Duffy, Ltd. 11 South LaSalle Street, Suite 1200 Chicago, Illinois 60603 Jeffrey Singer Mist y Rose Martin Segal, McCambridge, Singer & Mahoney, Ltd. 330 North Wabash Avenue, Suite 200 Chicago, Illinois 60611 Alexis Elizabeth Payne Bradley Louis Cohn Brett A. August Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP 311 South Wacker Drive, Suite 5000 Chicago, Illinois 60606 Steven R. Borgman Vinson & Elkins LLP Kenneth P. Held 2500 First City Tower 1001 Fannin Street Houston, Texas 77002 William J. Harte Dana Marie Pesha William J. Harte, Ltd. 111 West Washington, Suite 1100 Chicago, Illinois 60602 Kathleen Currie Chavez Chavez Law Firm P.C. 28 North First Street, #2 Geneva, Illinois 60134

Joseph Gratz Michael Page Keker & Van Nest LLP 710 Sansome Street San Francisco, California Alison C. Conlon Michael R. Dockterman Wildman, Harrold, Allen & Dixon 225 West Wacker Drive, Suite 3000 Chicago, Illinois 60606 Scott Ryan Wiehle Vinson & Elkins LLP Trammel Crow Center 2001 Ross Avenue, Suite 3700 Dallas, Texas 75201

Vincent V. Carissimi Joanna J. Cline Robert L. Hickok Pepper Hamilton LLP 3000 Two Logan Square 18th and Arch Streets Philadelphia, PA 19103 Aaron Daniel Van Oort Faegre & Benson LLP 90 South Seventh Street, Suite 2200 Minneapo lis, MN 55113 /s/ Janelle M. Carter__ 14