Vulcan Golf, LLC v. Google Inc., No. 07 C 3371, 2008 WL 818346 (N.D. Ill. Mar. 20, 2008) (Manning, J.).
Judge Manning granted in part the defendants’ Fed. R. Civ. P. 12(b)(6) motion to dismiss plaintiffs’ RICO, Lanham Act and related state law claims. Plaintiffs alleged that the "parking defendants" – entities that allegedly register common misspellings of domain names – worked together and conspired with defendant Google to populate the misspelled domains with revenue-generating advertising related to the actual web sites’ business.*
Anticybersquatting Consumer Protection Act ("ACPA")
The Court denied the Parking Defendants motion to dismiss plaintiffs’ ACPA claims. While plaintiffs did not allege that the Parking Defendants were the registrants of the domains at issue, they did allege that the Parking Defendants registered, owned, and controlled the sites. Furthermore, the Court would not rule on the factual issue of whether the domains – for example, vulcangolf.com and vulcanogolf.com – were confusingly similar to plaintiffs’ marks.
The Court denied Google’s motion to dismiss because while Google did not register or own the domains at issue, it was sufficient that they allegedly "trafficked" in them by working in concert with the other defendants.
The Court upheld plaintiffs’ trademark infringement claims. It was sufficient that plaintiffs had trademarks covering their own domain names, they were not required to have marks covering defendants’ misspelled domains. Additionally, the Court could not rule upon Parking Defendants’ arguments that they did not use the marks. The complaint alleged use, and determining whether Parking Defendants’ particular acts constituted use would require reliance upon facts outside the complaint.
Google argued that it should be dismissed because it was, at most, an innocent infringer and it had already agreed to permanently exclude all allegedly infringing domains identified by plaintiffs. Because the only remedy against an innocent infringer was an injunction, which Google had already agreed to, Google argued should be dismissed. The Court, however, did not dismiss the trademark claims against Google because dismissal would have required reliance upon facts outside of the complaint. The Court denied the motions to dismiss plaintiffs’ false designation of origin claims for the same reasons the trademark infringement claims were not dismissed.
Defendants argued that the dilution claims must be dismissed because plaintiffs’ marks were not famous. But because plaintiffs pled fame and because fame is a question of fact, the Court did not dismiss the claims.
* This post only addresses the IP aspects of the opinion, but the opinion also considers RICO and state law issues.