Vulcan Golf, LLC v. Google Inc. et al
MEMORANDUM and Order Signed by Judge Honorable Blanche M. Manning on 3/20/2008:Mailed notice(rth, )
Vulcan Golf, LLC v. Google Inc. et al
IN THE UNITED STATES DISTRICT COURT FOR THE 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, Plaintiffs, ) ) ) ) ) ) ) v. ) ) GOOGLE INC., OVERSEE.NET, ) SEDO LLC, DOTSTER, INC., a/k/a ) REVENUE DIRECT.COM., INTERNET ) REIT, INC., d/b/a IREIT, INC., and ) JOHN DOES I-X ) Defendants. )
Hon. Blanche M. Manning 07 C 3371
MEMORANDUM AND ORDER 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.1, 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. The plaintiffs have moved to amend paragraph 78 of the FAC to add Ireit as a "parking company" defendant. Because the plaintiffs assert that the omission was inadvertent, and Ireit does not contest the motion, it is granted.
Background According to the lengthy First Amended Complaint ("FAC") (469 paragraphs and 91
pages longthe 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"2, among other things, domain names that are the same as or substantially and confusingly similar to the plaintiffs' distinctive trade names or marks.3 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
The FAC identifies defendants Ireit, Oversee, Sedo, Dotster and unnamed conspirators as the "Parking Company" defendants. FAC ¶ 78. According to the FAC, a "parking company" is a company that "aggregates numerous domain names from individual domain registrants and contracts with an advertising service [here, Google] to license and monetize those domain names." Id. at ¶ 83(w). The FAC further defines "monetization" as "the practice of using a domain name for commercial gain by generating revenue from Internet advertising located on a webpage." Id. at 83(u). For more in-depth explanations of internet searches and the domain name system, see Bird v. Parsons, 289 F.3d 865, 869-70 (6th Cir. 2002); Lockheed Martin Corp. v. Network Solutions, Inc., 985 F. Supp. 949, 951-53 (C.D. Cal. 1997). Page 2
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 ¶ 119.4 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 IRICO (18 U.S.C. § 1962(c)); (2) Count IIRICO (18 U.S.C. § 1962(d)); (3) Count IIICybersquatting (18 U.S.C. § 1125(d)); (4) Count IVTrademark Infringement (15 U.S.C. § 1114(1)); (5) Count VFalse Designation of Origin (15 U.S.C. § 1125(a)); (6) Count VIDilution of Trademarks (15 U.S.C. § 1125(c)); (7) Count VIIIllinois Consumer Fraud and Deceptive Trade Practices Act (815 ILCS 505/2); (8) Count VIIIDeclaratory Judgment; (9) Count IXCommon Law Trademark; (10) Count XContributory Trademark Infringement; (11) Count XIVicarious Trademark Infringement; (12) Count XIIIntentional Interference with Current and Prospective Economic Advantage; (13) Count XIII--Unjust Enrichment; (14) Count XIVCivil 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. II. Analysis
The FAC defines "masked redirection," "framed forwarding," and "stealth forwarding" to mean "a method or system for preventing a user's web browser from accurately reporting the true origin of the content the user is viewing. Through such methods, a user can request one domain name and see that address in the browser's Address Bar, even as the user actually is shown content from a different destination." FAC ¶ 83t. Page 4
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."). A. Standing
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 Page 5
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. B. Lanham Act Claims 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)). a. Sedo and Oversee i. Registration
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 taste5, 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
The FAC defines "domain tasting" as "the practice of domain registrants registering a domain name to assess its profitability for the display of online advertising. Via the tasting procedure, a registrant may return a domain name within five days for a full refund. Domain tasters typically return domain names that they project to be unprofitable." FAC ¶ 83m. Page 9
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. ii. Auction site
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). iii. Confusingly similar
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. iv. Bad faith intent
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.6 b. Google
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.
Google also argues in a footnote, see Google Motion, Dkt. #101 at 12 n.9, that no bad faith intent exists on Google's part because Google had no notice of Vulcan's objections and acted promptly to disable service once it received notice. However, this argument is forfeited given that it was raised in a footnote. E.E.O.C. v. Custom Companies, Inc., Nos. 02 C 3768, 03 C 2293, 2007 WL 1810495, at *4 (N.D. Ill. June 21, 2007)("[A]rguments in footnotes are waived")(citing Moriarty ex rel. Local Union No. 727, I.B.T. Pension Trust, and the Teamsters Local No. 727 Health and Welfare Trust v. Svec, 429 F.3d 710, 722 (7th Cir. 2005)). Page 12
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). a. Sedo/Oversee i. Protectible interest
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 Page 13
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."). ii. "Use" of a trademark
Sedo and Oversee assert that they have not "used" the plaintiffs' marks as required by the language of the Lanham Act.7 Specifically, they contend that as a domain parking company, they
To the extent that the parties are arguing that there has been no "trademark use" (see, e.g., Oversee Motion to Dismiss at 6), the court notes that one well-known treatise on trademark law has opined that there is no separate requirement of "trademark use" under the Lanham Act: It is sometimes argued that before there can be an infringing use in violation of the Lanham Act, the accused use must be "use as a trademark." That is, the argument is made that as part of its prima facie case of infringement, the trademark owner must prove that the defendant is making use of the accused designation "as a trademark." The problem with this characterization is that the Lanham Act nowhere explicitly states that "use as a trademark" is required for an accused use to be an infringement. The statutory requirement of "trademark use" is indirect and implicit in the requirement that there be a likelihood of confusion for infringement to occur. Page 14
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
... It is my view that there is no separate statutory requirement of "trademark use." A requirement of trademark use is implicit in the requirement that there be a likelihood of confusion for infringement to occur. Thus, "trademark use" is not a separate element of plaintiff's case, but is only one aspect of the likelihood of confusion requirement for infringement. 4 McCarthy on Trademarks and Unfair Competition § 23:11.50 (4th ed.)(footnotes omitted). Thus, to the extent that the defendants' arguments could be construed as one arguing a lack of "trademark use," the necessary factual determination regarding likelihood of confusion is not well-suited for disposition on a motion to dismiss. Page 15
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.8 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
In this regard, the court notes that Oversee asserts in its motion to dismiss that: Even if Plaintiffs' allegations that Oversee entered into 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 . . . could be taken as true, such actions do not constitute "use" as required by the Lanham Act. Oversee Motion to Dismiss at 6. As discussed above, however, the FAC alleges facts that are not entirely analogous to those of the cases relied upon by the defendants. Moreover, the defedants' characterizations of the FAC's allegations is not the only way to read the FAC. Thus, this court declines to make a definitive finding as a matter of law that the allegations do not state a claim for relief. Page 17
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 factfinding, 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 seamlessly mesh with traditional Lanham analysis and that the transposition will require more factual development of the record than has been done at this early stage of the proceedings"). iii. Likelihood of Confusion
Sedo next contends that there is no likelihood of confusion among consumers because there is no confusion as to the origin of the respective products. According to Sedo, because the plaintiffs do not allege that Sedo is selling or offering services on the "deceptive domain" website or that Sedo listed their marks on the deceptive domain websites, there is no likelihood
of confusion. Sedo also argues that there can be no initial interest confusion on the part of web browsers, particularly when the marks at issue are a commonly used English word (i.e., "vulcan" and "golf"). However, the court declines to make such a determination as a matter of law given that the "likelihood of confusion" is a fact-specific inquiry best left for decision after discovery. In that vein, the court notes that the case relied upon by Sedo and Oversee in support of their motion to dismiss on this issue, Holiday Inns, Inc. v. 800 Reservation, Inc., 86 F.3d 619 (6th Cir. 1996), was decided after evidence was presented at a preliminary injunction hearing. Oversee also makes an argument relating to likelihood of confusion. Specifically, Oversee contends that the plaintiffs have failed to allege that Oversee caused any confusion; thus, according to Oversee, one need not consider whether there has been a likelihood of confusion. Oversee contends that "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' protected marks to the challenged domains." Oversee's Reply in Support of Motion to Dismiss at 8 (emphasis in original). However, the court declines to conclude at this juncture that these are the only ways in which Oversee could have caused a likelihood of confusion. By invoking the "cannot allege" language, Oversee necessarily asks the court to consider facts outside of the pleadings. Indeed, as noted above, in support of this argument, Oversee relies on the Holiday Inns case, which was decided on an appeal from a motion for a preliminary injunction after a full evidentiary hearing before the district court. The plaintiffs need not prove their case at this point in time, they need only adequately plead sufficient facts such that their claim is "plausible" and puts the defendants on notice of the claims against them such that the defendants can respond.
Finally, Sedo argues that Jackson in particular has failed to state a trademark claim against it. To the extent that this argument is based on other arguments already addressed (including no likelihood of confusion), those arguments are rejected for the same reasons discussed above. This leaves Sedo's claim that Jackson cannot state a trademark claim because he has failed to adequately allege that he has a protectible mark. The plaintiffs respond9 by pointing to allegations that "Bo Jackson has a valid and enforceable legally protectible interest in his name," FAC ¶ 63. But the FAC does not allege that he has a registered mark. Section 32 of the Lanham Act, 15 U.S.C. § 1114(1)(a), expressly protects against infringement of a "registered mark." Because Jackson fails to allege that he owns a registered mark, the claim under section 32 of the Lanham Act is dismissed as to Jackson. See Best Vacuum, Inc. v. Ian Design, Inc., No. 04 C 2249, 2005 WL 1185817, at *2 (N.D. Ill. Jan. 18, 2005)("Because Plaintiff does not have a registered mark, and because Section 32 of the Lanham Act protects only registered marks[,] Plaintiff's action under Section 32 of the Lanham Act has no likelihood of success."). c. Google i. Failure to allege knowledge
Google seeks to dismiss the direct and contributory infringement claims (counts IV and X) on the ground that the plaintiffs do not allege that Google either knew of the purportedly infringing nature of the domain names nor had reason to know of the infringing nature of the domain names. However, the FAC alleges that Google was aware of the allegedly infringing
The court notes that while the plaintiffs do not appear to respond to this argument in the trademark infringement section of their response, they do discuss Jackson's "protectible interest" in the ACPA section of their brief, see Plaintiffs' Response at 20. Thus, the court does not find that the plaintiffs have forfeited any argument regarding this issue, as suggested by Sedo. Page 21
nature of the purportedly deceptive domains. FAC ¶ 222 ("Even after the filing of this lawsuit and notice by Lead Plaintiffs' Counsel, Defendants intentionally and blatantly continue to engage in the Deceptive Domain Scheme and the other illegal action alleged herein . . . ."); FAC 222a(i) ("After the Complaint was filed, wwwVulcanGolf.com and VolcanGolf.com were deleted by the original registrants."); FAC ¶ 222a(ii) ("Almost immediately thereafter, wwwVulcanGolf.com and VolcanGolf.com were re-registered, relicensed, and redirected to Defendant Google Adsense for Domains . . . ")(emphasis in origianl); FAC ¶ 222a(iii) ("Despite the fact that Defendant Google was aware of Vulcan's Marks, Defendant Google chose to allow the domains wwwvulcangolf.com and volcangolf.com to remain in the Google Adsense for Domains Program"); FAC ¶ 222b ("Defendant Google knowingly and intentionally continues to license, traffic in, monetize, and/or use Deceptive Domains that have been part of FTC actions."); FAC ¶ 222c ("Defendant Google knowingly and intentionally continues to license, traffic in [,] monetize, and/or use Deceptive Domains that have previously been held by various courts to be infringing domains and violations of the ACPA."). Other allegations of knowledge need not be addressed here as they are laid out on page 54 of the plaintiffs' response to the motions to dismiss. This basis for dismissal is unavailing. ii. Innocent Infringer
Google's next argument relies upon the innocent infringer limitation as provided in 15 U.S.C. § 1114(2)(B), which states: Where the infringement or violation complained of is contained in or is part of paid advertising matter in a newspaper, magazine, or other similar periodical or in an electronic communication as defined in section 2510(12) of Title 18, the remedies of the owner of the right infringed or person bringing the action under section 1125(a) of this title as against the publisher or distributor of such newspaper, magazine, or other similar periodical or electronic communication Page 22
shall be limited to an injunction against the presentation of such advertising matter in future issues of such newspapers, magazines, or other similar periodicals or in future transmissions of such electronic communications. The limitations of this subparagraph shall apply only to innocent infringers and innocent violators. 15 U.S.C. § 1114(2)(B)(emphasis added). Google's argument goes as follows: because it is at most an innocent infringer, only injunctive relief is available against it and because it has already, of its own volition, permanently excluded all of the allegedly infringing domains listed in the FAC, Google has already granted the plaintiffs the injunctive relief they seek, therefore, this claim against Google is moot. The one obvious problem with this argument is that it requires the court to consider facts outside of the four corners of the FAC (i.e., that Google has already excluded the allegedly infringing domains from its advertising program), which is improper on a motion to dismiss. Accordingly, this basis for dismissal is rejected. 3. False Designation of Origin
The plaintiffs have also alleged a claim for false designation of origin claim against the defendants under 15 U.S.C. § 1125(a). This section provides as follows: (1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or (B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.
Sedo relies on its arguments made with respect to infringement in support of its motion to dismiss the false designation of origin claim. H-D Michigan, Inc. v. Top Quality Service, Inc., 496 F.3d 755, 759 (7th Cir. 2007)("[T]o prove a claim pursuant to 15 U.S.C. § 1125(a), a plaintiff must show (1) that its trademark may be protected and (2) that the relevant group of buyers is likely to confuse the alleged infringer's products or services with those of plaintiff.")(citation omitted). However, since the court is not dismissing those claims for the reasons stated above, it declines to dismiss the false designation of origin claim for the same reasons. b. Oversee10
According to Oversee, the plaintiffs have not adequately alleged that Oversee used a false designation of origin in connection with goods or services. However, since the arguments were unavailing for the infringement claims, they are also unavailing for the false designation of origin claim. c. Google
Google argues that the false designation of origin claim fails because the plaintiffs do not allege that Google uses the domain names "on or in connection with any goods or services." According to Google, the FAC only alleges that Google "processes the domain name and returns either a formatted HTML webpage for each domain that contains the Defendant Google Advertisements and related ad categories, or an XML feed containing the Defendant Google Advertisements." Motion at 14 (quoting FAC ¶ 120). Google contends that the FAC fails to allege that Google "uses" the domain name because it does not allege that the webpage that
The court notes that Oversee fails to address this argument in its reply brief. Page 24
Google purportedly "returns" to the internet user upon his her keyword search contains the allegedly deceptive domain names. Thus, it argues that because the FAC fails to allege that Google used a false designation of origin or false description or representation in connection with goods or services, its false designation of origin claim must fail. Google fails to cite any case law in support of its argument and the court declines to do Google's work for it. For that reason, and for the reasons discussed above in section II.B.2(b)(ii), the court rejects Google's position that the plaintiffs have failed to state a claim for false designation of origin. Moreover, to the extent that Google relies upon facts not pled in the FAC, see Google Motion to Dismiss, Dkt. #101 at 13 ("The facts as pleaded in the First Amended Complaint show that Google does not label any advertising with any Vulcan Golf, Fisher Nuts, Blitz Realty, or Bo Jackson designation. The allegedly infringing domain names, such as vulgongolf.com and wwwjbssinc.com, were not provided by Google and are not used as labels for goods and services"), such facts are not properly considered at this point in the litigation. 4. Trademark Dilution
The plaintiffs also allege a class claim of trademark dilution under 15 U.S.C. § 1125(c), which provides: Subject to the principles of equity, the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner's mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury. a. Famous
Sedo asserts that Vulcan has "failed to allege" that it is famous and that Vulcan and
Jackson are not famous. Thus, it concludes that no dilution has occurred. Oversee and Google also contend that the plaintiffs do not adequately allege that the marks were famous, but discuss the plaintiffs generally and do not gear their arguments towards specific plaintiffs. Contrary to the defendants' arguments, the FAC alleges that: "[a]t the time that the Lead Plaintiffs and the members of the Class registered their domain names, the Distinctive and Valuable Marks were distinctive, protected/protectible, and/or famous . . . . based on, among other things, the inherent distinctiveness and federal registration of the Distinctive and Valuable Marks, and the extensive nationwide use, advertising, promotion, and recognition of the Distinctive and Valuable Marks." FAC ¶¶ 377-78. In addition, the FAC contains specific allegations as to the named plaintiffs' marks regarding their purported "famous" designation. See, e.g., FAC ¶ 31 ("JBSS owns trademarks including `Fisher' . . . . The JBSS Marks were publicized as of 1995 and have been featured on the Internet, in various forms of media advertisements and in stores published throughout the United States"); FAC ¶ 23 ("Vulcan Golf offers and provides a full array of golf and related products and services under the Vulcan Marks. Vulcan Golf uses the Vulcan Marks in connection with the provision of golf clubs, golf balls, golf lessons, custom golf club fitting and other golf accessories") and ¶ 26 ("Vulcan Golf's main Internet website using the Vulcan Marks and featuring information on many of the products and services of Vulcan Golf can be accessed via the domain name `www.VulcanGolf.com' which has been registered and used since May 1997"); FAC ¶ 55 ("Bo Jackson was born November 30, 1962, and became famous at least on or about 1985 when he won the 1985 Heisman Trophy as the most outstanding college football player in the United States") and ¶ 61 ("In 1989 and 1990, Bo Jackson achieved national commercial fame through the `Bo Knows' advertising campaign . .
. ."). Further, to the extent that Sedo argues that Vulcan and Jackson are not famous as a matter of law, the Act goes on to state that: For purposes of paragraph (1), 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. In determining whether a mark possesses the requisite degree of recognition, the court may consider all relevant factors, including the following: (i) The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner or third parties. (ii) The amount, volume, and geographic extent of sales of goods or services offered under the mark. (iii) The extent of actual recognition of the mark. (iv) Whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register. 15 U.S.C. § 1125(c)(2)(A). Given the factual inquiry necessary to determine whether a trademark is "famous" for purposes of this Act, the court declines to make such a determination on a motion to dismiss with respect to the plaintiffs Bo Jackson, Vulcan Golf and JBSS. To the extent that Google argues that the dilution claim fails because the FAC does not allege that each of the marks is famous and does not plead facts in support, this argument is rejected for the reasons just discussed with the following exception. Specifically, as noted by Google and Oversee, the FAC alleges facts as to plaintiff Blitz Realty that pleads Blitz out of court with respect to this claim. Specifically, the FAC alleges that Blitz Realty Group is a "small, local real estate company" whose marks are "widely known and recognized among the community in Northern Illinois." FAC ¶¶ 44, 50. This runs contrary to the statutory requirement that the mark be "widely recognized by the general consuming public
of the United States. . . ." As such, Google and Oversee's motion to dismiss Blitz's false designation of origin claim is granted. b. "Use" of a trademark
Sedo also argues that there can be no dilution as it did not "use" the mark as required by the Act. Specifically, it contends that procurement of a domain name does not constitute use in commerce, and simply because "the domain owners `parked' their page with Sedo, along with 6,999,997 domain names is simply not enough to create any liability on behalf of Sedo." For the same reasons already discussed in section II.B.2(b)(ii), this argument is rejected as a basis to dismiss the dilution claim at this stage of the litigation. c. Insufficient allegations of blurring/tarnishment
Finally, Sedo argues that the plaintiffs have not alleged facts in support of their dilution claim that their marks will likely suffer blurring and be tarnished. Under § 1125(c)(2)(B) and (C), "dilution by blurring" is defined as "association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark" whereas "dilution by tarnishment" is defined as "association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark." The plaintiffs allege that the defendants have engaged in a scheme to profit from the plaintiffs' trademarks by creating webpages associated with domain names that are similar to the plaintiffs' names or marks. These webpages contain advertising from which the defendants profit. According to the plaintiffs, because internet users could mistakenly assume that the defendants' webpages are associated with the plaintiffs and the plaintiffs do not have the ability to control the association of their marks, dilution has occurred. As such, plaintiffs allege that the defendants "use of the
Deceptive Domains presents a likelihood of dilution of the distinctive value" of their marks. FAC at ¶ 217. Because the FAC contains allegations sufficient to allege dilution, the motion to dismiss is denied. C. State Law Claims11 1. Illinois Consumer Fraud and Deceptive Business Practices Act (Illinois Consumer Fraud Act) and the Illinois Uniform Deceptive Trade Practices Act a. Acts Prohibited Outside Illinois
The defendants, both individually and together, raise numerous arguments in support of their motions to dismiss the Illinois Consumer Fraud Act count. Because the court finds that one issue raised by Ireit requires dismissal of the count as currently pled, the court will address this issue first. In addition, in the interest of completeness, the other challenges to the sufficiency of
The court notes that in addition to filing separate briefs on the various state law claims, the defendants have also filed a consolidated motion to dismiss the same state law claims. From what the court can tell, there has been duplication of arguments, which the defendants assured the court would not occur. Moreover, at least one argument made in the individual briefs actually contradicts an argument made in the consolidated brief. With respect to the Illinois Consumer Fraud Act claim, in the consolidated motion to dismiss, which was signed by all of the defendants, they concede in a footnote that "[d]efendants do not move for dismissal on this separate ground [of failure to allege that they are consumers], however, because Plaintiffs appear to have arguably alleged a nexus between the complained-of conduct and consumer protection." Consolidated Motion, Dkt. #99 at 25 n.10. However, Sedo argues in its individual brief that the plaintiffs have, indeed, failed to allege that they are consumers. Such contradictions are not acceptable. If a party signs on to all arguments made in a consolidated motion, it cannot turn around and make a contrary argument in its individual motion. Not only is this intellectually disingenuous, but it leads to additional work for the court. The court expects that all future briefs will avoid these problems so that the court can analyze the parties' contentions in an orderly and efficient manner. On a different note, to the extent that any of the defendants seek to have the state law claims dismissed on the ground that no federal law claims remain pending and therefore supplemental jurisdiction is lacking, that request is denied because certain federal law causes of action remain pending. Page 29
the count will also be addressed in the event that the plaintiffs choose to replead this count. As to the issue that requires dismissal, Ireit argues that the plaintiffs fail to plead any "jurisdictional nexus" to Illinois. The Consumer Fraud Act does not apply to "fraudulent transactions which take place outside Illinois." Avery v. State Farm Mut. Auto Ins. Co., 835 N.E.2d 801, 850 (Ill. 2005). As a matter of statutory interpretation, the Illinois Supreme Court has held that "a plaintiff may pursue a private cause of action under the Consumer Fraud Act if the circumstances that relate to the disputed transaction occur primarily and substantially in Illinois." Id. at 854. The Illinois Supreme Court further "recognize[d] that there is no single formula or bright-line test for determining whether a transaction occurs within this state" and that "each case must be decided on its own facts." Id. In Avery, the Illinois Supreme Court addressed whether a class of insureds, who were challenging the defendant's practice of using non-OEM crash parts to repair policyholders' cars, could sue under the Consumer Fraud Act. It concluded that because the "overwhelming majority of circumstances relating to the disputed transactions in this caseState Farm's claims practicesoccurred outside of Illinois for the out-of-state plaintiffs[,]" they "have no cognizable cause of action under the Consumer Fraud Act." Id. Obviously, at this stage of the proceedings, any in-depth factual inquiry is inappropriate. Rather, the court must look to whether the allegations of the FAC are factually sufficient such that one could plausibly conclude that the circumstances that relate to the disputed transaction (i.e., the alleged deceptive domain scheme) occurred primarily and substantially in Illinois. Ireit argues that the FAC fails on this front because Ireit is not based in Illinois and no relevant transaction occurred in Illinois.
While the plaintiffs contend that Illinois has "significant contacts" with each of the named class plaintiffs because each is a resident of the state and each conducts substantial business in this state, the plaintiffs point to no allegations that plausibly suggest that the purported deceptive domain scheme occurred primarily and substantially in Illinois. Accordingly, Ireit's motion to dismiss the Consumer Fraud Act claim on this count is granted and the plaintiffs are given 21 days to replead. Although not raised by all of the defendants, the court finds that dismissal on this ground is equally applicable to all defendants. b. Pleading with Specificity
All of the defendants assert that the plaintiffs have failed to allege with particularity their Consumer Fraud Act count as required by Fed. R. Civ. P. 9(b).12 Courts in this district have generally held that claims under the Consumer Fraud Act are subject to the heightened pleading requirements of Rule 9(b). Costa v. Mauro Chevrolet, Inc., 390 F. Supp. 2d 720, 731 (N.D. Ill. 2005) ("A complaint alleging a violation of the Illinois [Consumer] Fraud Act must be pled with the same particularity and specificity as that required under common law fraud under Rule 9(b).")(citing Murry v. Am. Mortg., Banc, Inc., No. 03 C 5811, 2004 WL 1474584, *6 (N.D. Ill. June 29, 2004) (citing Gallagher Corp. v. Mass. Mut. Life Ins. Co., 940 F. Supp. 176, 180 (N.D. Ill. 1996)); see also Daniels v. Bursey, 313 F. Supp. 2d 790, 801 (N.D. Ill. 2004). However, at least one court in this district has concluded that the heightened pleading requirements under Rule 9(b) need not be satisfied if the plaintiff is not alleging fraud. See Sotelo v. DirectRevenue, LLC, 384 F. Supp. 2d 1219, 1233-34 (N.D. Ill. 2005) (stating that
This argument appears not only in the consolidated motion to dismiss filed by all of the defendants but also, improperly and repetitively, in Sedo's separate motion to dismiss. Page 31
because plaintiff expressly disavowed any fraud claim and indicated that his Consumer Fraud Act claim was based only on conduct prohibited by § 2 the Uniform Deceptive Practices Act (which is incorporated into the Consumer Fraud Act), such as business activities that create "confusion or misunderstanding as to the source, sponsorship, approval, or certification of goods or services," as well as "any other conduct which similarly creates a likelihood of confusion or misunderstanding," pleading with particularity was not required). In the first instance, the court notes that this count as pled is not a model of clarity. It appears, based on the allegations of the FAC, that the plaintiffs are only alleging unfair trade practices under the Deceptive Trade Practices Act (as incorporated into the Consumer Fraud Act), which reads in relevant part that "[a] person engages in a deceptive trade practice when, in the course of his or her business, vocation, or occupation, the person: . . . causes likelihood of confusion or of misunderstanding as to affiliation, connection, or association with or certification by another . . . ." 815 ILCS 510/2(a)(3). See FAC at ¶ 394 ("By means of the actions alleged above, Defendants have advertised to the public that the Defendants' infringing Deceptive Domains and the websites located at the Deceptive Domains are related to, or are an official website of, Lead Plaintiffs and/or the Class."); ¶ 400 ("Defendants' illegal actions alleged herein create a likelihood of confusion or of misunderstanding as to affiliation, connection, association, or certification of the infringing Deceptive Domains with Lead Plaintiffs and the Class."); and ¶ 402 ("Defendants have knowingly, intentionally, and deliberately engaged in conduct that creates a likelihood of confusion or misunderstanding."). The court understands the plaintiffs to be disavowing a claim of fraud. Response at 89 ("Contrary to Defendants' arguments, the statutes cover much more than fraudulent practices
(which under some circumstances may require special pleading)."). As the court has construed the claim then, the heightened pleading requirements do not apply and this basis for dismissal is rejected. However, if this is not the case (i.e., the plaintiffs are indeed raising a Consumer Fraud Act claim based on fraud), they are directed to file an amended pleading within 21 days of the date of entry of this order which clarifies that they are seeking relief based on fraud and complies with Rule 9(b). As a final matter on this count, the court notes that it cannot make heads or tails of the plaintiffs' argument that fraud need not be pled with specificity because "the Seventh Circuit found trademark violations to be actionable under the Federal Trade Commission Act" and that "[t]herefore, by the express statutory language of the ICFDBA, the misleading use of trade names in actionable under the Act and there is no requirement to plead the specificity of common law fraud." Plaintiffs' Response at 90. The defendants are not asserting that the plaintiffs cannot bring the claim under the Act, they are arguing that it was not properly pled. Regardless, the court n
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