Vulcan Golf, LLC v. Google Inc. et al

Filing 212

DECLARATION of Joseph C. Gratz regarding response in opposition to motion 207 Amended (Attachments: # 1 Exhibit A-D)(Moran, Mariah)

EXHIBIT A

AdSense for Domains Trademark Complaint Procedure

Page 1 of 1

Trademark Complaint Procedures
Home About Google Trademark Complaint Procedures

AdSense for Domains Trademark Complaint Procedure
Through its AdSense for Domains program, Google provides domain name registrars and other holders of large numbers of inactive domain names with an opportunity to display ads and links on the parked web pages. Please note that Google is not in any way involved with the selection or registration of these domain names, and is not in a position to arbitrate trademark disputes between the registrants, our partners, and trademark owners. Accordingly, we encourage trademark owners to resolve their disputes directly with the registrants or registrars. As a courtesy to trademark owners, however, we are willing to perform a limited investigation of reasonable complaints. If you are a trademark owner and you object to the Sponsored Links appearing on a web site served by AdSense for Domains, please send the following information via email to [e-mail]: 1. Name of Company 2. Contact information (including email address) 3. List of trademark(s) at issue and the country/countries in which it is registered. If the trademark is registered, provide the country and registration number. 4. The identity of the parked domain(s) at issue. 5. Include the following statement: "I have a good faith belief that use of the trademarks described above with the advertisements described above are not authorized by the trademark owner or its agent, nor is such use otherwise permissible under law." 6. Include the following statement: "I represent that the information in this notification is true and correct and that I am authorized to act on behalf of the trademark owner." 7. Your signature. v. 052005 Š2008 Google - Home - About Google - We're Hiring - Site Map

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http://www.google.com/tm_complaint_afd.html

9/9/2008

EXHIBIT B

EXHIBIT C

LAW OFFICES

KEKER & VAN NEST
LLP
710 SANSOME STREET SAN FRANCISCO, CA 94111-1704 TELEPHONE (41S) 391-5400 FAX [phone] WWW.KVN.COM

JOSEPH C. G.RATZ JGRATZ~KVN.COM

May 13, 2008

VIA E-MAIL AND

U.S.

MAL

Robert M. Foote Foote, Meyers, Mielke & Flowers, LLC 28 Nort First Street, Suite 2
Geneva,IL 60134

Re: Vulcan Golf LLe v. Google Inc., et al. United States District Cour, Nortern District of Ilinois Eastern Division, Case No. 07CV3371
Dear Mr. Foote:
I write in response to your letters of May 7, 2008 and May 12,2008. Google's response is twofold:jėrst, Google's curent policies eliminate the need for any injunction, and second, a filtering scheme, as your letter proposes, would be both unworkable and overinclusive.

I.

A. Google's policies eliminate the need for an injunction.
As we have informed you several times before, Google takes seriously all allegations of trademark infringement. Google has implemented a program designed to ensure that domains are excluded from the AdSense for Domains program after a trademark holder informs Google of
its objection to those domains. When Google receives a complaint from a trademark holder

alleging that a domain is infrnging, as a couresy, Google places that domain name on its "fail list." Google takes reasonable steps to ensure that domains on the "fail list" are excluded from AdSense for Domains. This policy is clearly outlined on Google's website at http://ww.google.com/tm _ complaint_ afd.htmL.
Plaintiffs have never availed themselves of this procedure, choosing instead to inform Google about domains to which plaintiffs object by naming them for the first time in their
pleadings. Before seeking extraordinar relief from the cour, Plaintiffs must exhaust all other avenues for relief, including takng simple steps-such as giving notice to Google-that would

eliminate any claimed har. Unless and until Google ceases to place domains on its "fail list" at the request of trademark holders, Plaintiffs have no grounds to seek an injunction.

417241.01

:. J ~

Robert M. Foote May 13,2008
Page 2

Google has promptly added every domain you have identified to its "fail list." We have repeatedly asked you to identify any instance in which you believe we have failed to do so. You have repeatedly ignored those requests, and then reiterated your unfounded accusations in
pleading after pleading. We yet again ask you to identify any instance in which you believe
Goog1e has failed to add any identified domain to its "fail

list."

B. Plaintiffs' proposal to fiter domains is unnecessary and unworkable.

Your letter of May 7, 2008 proposes a set of filtering rules by which you suggest Goog1e could separate objectionable domains from unobjectionable domains. But without any communication from the trademark holder, Goog1e has no way to know whether the trademark holder objects to a given domain name. Many words that are trademarks, such as VULCAN, FISHER, and BLITZ, are used in other contexts. No fiter can tell whether a domain name containing the word "VUCAN" refers to Vulcan Golf, or instead to Vulcan (Roman god of fire); Vulcan (the planet whence came Star Trek's Mr. Spock); Black Vulcan (an Afrcan American superhero on the anmated series Super Friends); Vulcan, Michigan; Vulcan, Missour; Vulcan, Alberta; either ofthe two cities in Romana named Vulcan; Vulcan (a volcano in Papua New Guinea); vulcanzation (a method of strengthening rubber); or Operation Vulcan (an Alled action in Tunsia durng World War II).

Similarly, a domain name containing the word "FISHER" could refer to cities in Ilinois, Arkansas, or Louisiana; to Fishers, Indiana; to Fishers Island, New York; to Amy Fisher (the socalled "Long Island Lolita"), actress Carre Fisher, or crooner Eddie Fisher. And a domain name containing the word "BLITZ" could refer not to a small Ilinois realty company, but instead to The Blitz (German aerial attacks on Britain durng World War II, the blitz (a defensive maneuver in football), Blitz chess (a high-speed varation on the board game), or "Blitz," mascot of the NFL's Seattle Seahawks.

i. I

Nor could any filter take into account "grpe site" domain names, such as "i-dislike-bojackson.com," which have been found by numerous cours to be noninfrnging. See, e.g.,
Lamparello v. Falwell, 420 F.3d 309,313 (4th Cir. 2005) (fallwell.com did not infrnge); Bosley Med. Inst., Inc. v. Kremer, 403 F.3d 672 (9th Cir. 2005) (bosleymedicaLcom and

bosleymedicalviolations.com did not infrnge); Taubman v. Webfeats, 319 F.3d 770 (6th Cir. 2003) (taubmansucks.com, theshopsatwillowbendsucks.com, wilowbendmallsucks.com, and wilowbendsucks.com did not infrnge).
Plaintiffs' other suggested fitering methods are similarly unworkable. Goog1e canot

block all domains that are "less than 2 character deviations" from Plaintiffs' marks, as such a rule would ban ..ww.B1atz.com.. (referrng, perhaps, to the storied Milwaukee brewery) or ..ww.vo1can.com.. (having to do with Volcan Mountain, near San Diego), or ..ww.fishes.com... Nor can Google block any domain ending, for example, in "net," as such a
rule would ban domains like ..w.fishercabernet.com.. (referrng to Fisher Vineyards

Cabemet, which has a 90-point rating from Wine Advocate) or ..w.blitzclarnet.com..
(referrg to clarinet cleaning products made by Blitz Manufactung, Inc.).

417241.01

Robert M. Foote May 13, 2008
Page 3

Plaintiffs' fourh and final suggested filtering method is to block ads from appearng on "an agreed list of 'typo' Domains for each Lead Plaintiff." This is precisely what Google already does: blocks ads from domains identified by trademark holders. No injunction is needed for this practice to continue; all that is needed is for Plaintiffs to use the reasonable means Google already provides for removing from AdSense for Domains any domain names to which Plaintiffs object.
We suggest that the parties schedule a conference call to discuss this matter further, as contemplated by Judge Maning's May 5,2008 Order.

,,

JCG/ajt

417241.01

EXHIBIT D