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Case 5:04-cv-01055-NAM-GHL Document 19 Filed 09/28/06 Page 1 of 16
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`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF NEW YORK
`____________________________________________
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`RESCUECOM CORPORATION,
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`Plaintiff,
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`5:04-CV-1055
`(NAM/GHL)
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`v.
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`GOOGLE, INC.,
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`N
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`Defendant.
`____________________________________________
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`APPEARANCES:
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`Rescuecom Corporation
`2560 Burnet Avenue
`Syracuse, New York 13206
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`A
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`Hunton & Williams LLP
`200 Park Avenue
`New York, New York 10166-0136
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`Hon. Norman A. Mordue, Chief Judge:
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`OF COUNSEL:
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`Edmund J. Gegan, Esq.
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`Shawn Patrick Regan, Esq.
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`MEMORANDUM-DECISION AND ORDER
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`I.
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`INTRODUCTION
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`Defendant Google, Inc., moves to dismiss plaintiff Rescuecom Corporation’s complaint
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`pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure for failure to state a claim on
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`which relief can be granted. Defendant contends that selling “Rescuecom”, plaintiff’s trademark,
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`to plaintiff’s competitors as a keyword that triggers the appearance of links to their websites
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`among the search results an Internet user receives when he or she enters “Rescuecom” in Google,
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`defendant’s Internet search engine,1 is not a trademark “use” within the meaning of the Lanham
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`Act, 15 U.S.C. § 1051 et seq. Thus, defendant argues, plaintiff can prove no set of facts entitling
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`it to relief on its trademark infringement claim (Count I), false designation of origin claim (Count
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`II), federal dilution claim (Count III), common law trademark infringement claim (Count IV), or
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`state law dilution claim (Count V), all of which require proof of trademark use. Defendant also
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`seeks dismissal of plaintiff’s tortious interference claim (Count VI) for failure to state a claim.
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`Plaintiff opposes defendant’s motion.
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`II.
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`The Complaint
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`The Court accepts as true the following facts from the complaint: Plaintiff is a computer
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`services franchising business. Its 67 franchises offer repair, consulting, networking, and Internet
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`services. Plaintiff offers its franchisees the use of its trademarks and business system, which
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`includes a 24/7/365 telephone answering service, a dispatch service, and customer service.
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`In 1998, plaintiff filed and registered “Rescuecom” as its trademark with the United States
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`Patent and Trademark Office. Through great expense and care, plaintiff has become well known
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`and famous in its market and has gained a reputation for excellence and outstanding service to
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`customers and franchisees. As a result, its trademark is a valuable business asset.
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`Plaintiff’s main website’s domain name is Rescuecom.com. Plaintiff conducts a
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`substantial amount of its business over the Internet, and receives an average of 17,000 to 30,000
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`visitors to its websites each month. Plaintiff advertises over the Internet, and through Google.
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`1 The Second Circuit defines “search engine” operationally:
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`A search engine will find all web pages on the Internet with a particular word or phrase.
`Given the current state of search engine technology, that search will often produce a list of
`hundreds of web sites through which the user must sort in order to find what he or she is
`looking for.
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`Sporty’s Farm L.L.C. v. Sportsman’s Market, Inc., 202 F.3d 489, 493 (2d Cir. 2000).
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`Case 5:04-cv-01055-NAM-GHL Document 19 Filed 09/28/06 Page 3 of 16
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`Because plaintiff’s services are computer related its potential franchisees and customers use the
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`Internet to do business and search for goods and services. Plaintiff’s famous name and
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`trademark, as well as its reputation for excellence, distinguish its goods and services from its
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`competition and lead potential franchisees and customers to search for Rescuecom Corporation
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`specifically through a variety of means, including Google.
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`There are two primary ways an Internet user can find a particular company’s website. An
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`Internet user may either guess that the company uses its name or trademark as its domain name,
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`and enter that domain name into an Internet browser, or enter the company’s name or trademark
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`into an Internet search engine such as Google.
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`Google is located at the domain name Google.com. Defendant claims Google is the most
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`popular search engine on the Internet and that it maintains proprietary, patented, software which
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`lists websites in order of relevance to the Internet user’s search terms. The search results are
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`often voluminous and list thousands of websites.
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`From an Internet user’s search terms, defendant can ascertain the subject, company,
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`goods, or services in which the Internet user is interested. According to the complaint, “[t]his
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`allows Google to obtain a significant percentage of its profit from the sale of ‘contextual
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`advertising’ space, that is advertising space which allows companies to place their advertising in
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`front of consumers who have already identified themselves as interested in products or services
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`similar to theirs.” One of the programs defendant offers is “AdWords”. Using AdWords, an
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`advertiser can bid on terms (keywords) an Internet user might enter as a search term on Google.
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`Defendant then links the advertisement and hyperlink (sponsored link) to the keyword the
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`advertiser purchased. When an Internet user enters the keyword, it triggers the sponsored link to
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`Case 5:04-cv-01055-NAM-GHL Document 19 Filed 09/28/06 Page 4 of 16
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`appear on the search results page either to the right or immediately above the search results.
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`Another program defendant offers is “Keyword Suggestion Tool”, which it uses to recommend
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`keywords to advertisers.
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`Defendant does not always identify sponsored links as advertisements and it designs those
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`appearing at the top of the search results to look like part of the “non-sponsored” search results.
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`As a result, Internet users may infer, based on a sponsored link’s appearance at the top of the list
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`of search results, that a sponsored link is the most relevant website among the search results. An
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`Internet user can “click” on the sponsored link with a mouse to go to the advertiser’s website.
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`Advertisers pay defendant based on the number of clicks the sponsored link receives.
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`Rescuecom is an often searched term on the Internet. Plaintiff submits thousands of
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`keywords to defendant, including Rescuecom, alone and in combination with other words.
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`Consequently, when an Internet user enters Rescuecom into Google as a search term, one of
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`plaintiff’s sponsored links appears above or to the right of the search results.
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`Many of plaintiff’s competitors advertise their services on the Internet and have submitted
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`plaintiff’s trademark to defendant’s AdWords program as a keyword. Defendant is aware that
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`plaintiff is in the business of computer services franchising and computer service, repair,
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`maintenance, and consulting. Defendant, through its “Keyword Suggestion Tool”, has
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`recommended Rescuecom to plaintiff’s competitors as a keyword in order to make plaintiff’s
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`competitors’ advertising more successful and to generate more profits for defendant by
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`intercepting and diverting plaintiff’s customers and potential customers.
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`A
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`III.
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`DISCUSSION
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`A.
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`Standard – Rule 12(b)(6)
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`Case 5:04-cv-01055-NAM-GHL Document 19 Filed 09/28/06 Page 5 of 16
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`When considering a motion to dismiss a complaint under Rule 12(b)(6), a court “‘must
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`accept as true all of the factual allegations set out in plaintiff's complaint, draw inferences from
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`those allegations in the light most favorable to plaintiff, and construe the complaint liberally.’”
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`Gregory v. Daly, 243 F.3d 687, 691 (2d Cir. 2001) (quoting Conley v. Gibson, 355 U.S. 41, 45-46
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`(1957)). A court may not dismiss an action “unless it appears beyond doubt that the plaintiff can
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`prove no set of facts in support of [its] claim which would entitle [it] to relief.” Conley, 355 U.S.
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`at 45-46. “‘[T]he issue is not whether a plaintiff will ultimately prevail but whether the claimant
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`is entitled to offer evidence to support the claims.”’ Todd v. Exxon Corp., 275 F.3d 191, 198 (2d
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`Cir. 2001) (quoting Scheuer v. Rhodes, 416 U.S. 232, 236 (1974)). B.
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`Trademark
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`Infringement – 15 U.S.C. § 1114(1)
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`Defendant seeks dismissal of plaintiff’s trademark infringement claim (Count I) and false
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`designation of origin claim (Count II) on the basis that the complaint fails to allege that
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`defendant’s use of plaintiff’s mark, Rescuecom, is an actionable “trademark use”. To prevail on a
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`trademark infringement claim under § 32(1) of the Lanham Act, 15 U.S.C. § 1114(1)2 or a false
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`designation of origin claim under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a)(1),3 “a plaintiff
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`2 15 U.S.C. § 1114 provides, in relevant part,
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`(1) Any person who shall, without the consent of the registrant-
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`(a) use in commerce 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 . . .
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`shall be liable in a civil action by the registrant for the remedies hereinafter provided.
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`3 15 U.S.C. § 1125 provides, in relevant part,
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`(a) Civil action
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`(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
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`Case 5:04-cv-01055-NAM-GHL Document 19 Filed 09/28/06 Page 6 of 16
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`must establish that (1) it has a valid mark that is entitled to protection under the Lanham Act; and
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`that (2) the defendant used the mark, (3) in commerce, (4) ‘in connection with the sale . . . or
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`advertising of goods or services,’ 15 U.S.C. § 1114(1)(a), (5), without the plaintiff's consent.” 1-
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`800 Contacts v. WhenU.com, Inc., 414 F.3d 400, 406-407 (2d Cir. 2005). The plaintiff must also
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`show that the defendant's use of that mark “is likely to cause confusion . . . as to the affiliation,
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`connection, or association of [the defendant] with [the plaintiff], or as to the origin, sponsorship,
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`or approval of [the defendant's] goods, services, or commercial activities by [the plaintiff].” 15
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`U.S.C. § 1125(a)(1)(A).
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`Although the Second Circuit has not considered whether the purchase or sale of a
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`trademark as a keyword that triggers the appearance of an advertisement is a trademark
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`infringement, see 1-800 Contacts, 414 F.3d at 411-12 (distinguishing the defendant’s internal use
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`of a trademark to trigger a “pop-up” advertisement to appear from “internet advertising
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`companies,” that “‘sell’ keyword trademarks to . . . customers or otherwise manipulate which
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`category-related advertisement will pop up in response to any particular terms on the internal
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`directory.”), several district courts have reached different conclusions on this issue. Compare
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`GEICO v. Google, Inc., 330 F.Supp.2d 700 (E.D.Va. 2004) (denying the defendant Internet
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`thereof, or any false designation of origin, false or misleading description of fact, or false or
`misleading representation of fact, which-
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`(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
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`(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,
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`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.
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`Case 5:04-cv-01055-NAM-GHL Document 19 Filed 09/28/06 Page 7 of 16
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`search engines’ motion to dismiss finding that the plaintiff adequately alleged that the defendants’
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`use of plaintiff’s trademark, GEICO, as a keyword to advertisers was a “use in commerce” and
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`likely to cause confusion), claim dism'd, Order, Dec. 15, 2004 (dismissing Lanham Act claim
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`following bench trial on finding no likelihood of confusion), Edina Realty, Inc. v. The
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`MLSOnline.com, Civ. 04-4371, 2006 WL 737064 (D.Minn. Mar. 20, 2006) (denying the
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`defendant’s motion for summary judgment finding that the defendant’s purchase of the plaintiff’s
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`trademark as a keyword to prompt the appearance of defendant’s sponsored link advertisements
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`was a “use in commerce”), Edina Realty, Inc. v. The MLSOnline.com, Civ. 04-4371, 2006 WL
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`1314303 (D.Minn. May 11, 2006) (Edina II) (denying motion for reconsideration), Rescuecom
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`Corp. v. Computer Troubleshooters USA, Inc., 1:04-CV-03499 (N.D.Ga. Sept. 16, 2005)
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`(declining to dismiss the complaint which alleged that the defendant’s purchase of the plaintiff’s
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`trademark from an Internet search engine as a keyword that would generate the appearance of the
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`defendant’s sponsored link was a “use in commerce” concluding that in view of the novel legal
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`question presented, and the unsettled state of the law, resolution should await a factually
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`developed record), Google v. American Blind & Wallpaper Factory, Inc., C 03-05340, 2005 WL
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`832398 (N.D.Cal. Mar. 30, 2005) (denying Google’s motion to dismiss in view of the unsettled
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`state of the law and in order to await factual development of the record), and 800-JR Cigar, Inc.,
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`v. Goto.com, Inc., Civil Action No. 00-3179, 2006 WL 1971659, *8 (D.N.J. July 13, 2006)
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`(denying summary judgment finding a question of fact as to whether the defendant “pay-for-
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`priority” Internet search engine used the plaintiff’s trademark within the meaning of the Lanham
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`Act because there was evidence that the defendant accepted bids on the plaintiff’s trademark from
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`the plaintiff’s competitors, ranked paid advertisers before “natural” listings among the search
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`Case 5:04-cv-01055-NAM-GHL Document 19 Filed 09/28/06 Page 8 of 16
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`results, and suggests the plaintiff’s trademarks to the plaintiff’s competitors), with Merck & Co.,
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`Inc. v. Mediplan Health Consulting, Inc., 425 F.Supp.2d 402, 415 (S.D.N.Y. 2006) (Merck I)
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`(granting the defendants’ motion to dismiss claims regarding the defendants’ purchase of the
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`plaintiff’s trademark “ZOCOR” as a keyword from Internet search engines, holding that the
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`defendants’ purchase of the trademark was an “internal use” and did not constitute a “trademark
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`use” because the defendants did not place the plaintiff’s marks “on any goods or containers or
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`displays or associated documents, or use them in any way to indicate source or sponsorship”), and
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`Merck & Co., Inc. v. Mediplan Health Consulting, Inc., NO. 05 CIV 3650, 2006 WL 1418616
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`(S.D.N.Y. May 24, 2006) (Merck II) (denying motion for reconsideration). Plaintiff urges the
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`Court to apply the reasoning set forth in GEICO and Edina Realty and deny defendant’s motion to
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`dismiss.
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`In GEICO, the court denied the defendant search engines’ motion to dismiss finding that
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`the plaintiff adequately alleged trademark use by asserting that when the “defendants sell the
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`rights to link advertising to plaintiff’s trademarks, defendants are using the trademarks in
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`commerce in a way that may imply that defendants have permission from the trademark holder to
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`do so.” 330 F.Supp.2d at 704.4 In Edina Realty, the defendant real estate brokerage firm (and the
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`plaintiff real estate brokerage firm’s direct competition), purchased “Edina Realty”, the plaintiff’s
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`trademark, as a keyword from Internet search engines and used it in hidden links and hidden text
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`on its website. 2006 WL 737064 at *1. There, the court denied the defendant’s motion for
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`4 In GEICO, the plaintiff further alleged that the defendants “incorporate[ed] [the trademark] into
`advertisements, which are likely to deceive customers into believing that the advertisers provide accurate
`information about GEICO products”; and that the defendants “exercise significant control over the content
`of advertisements that appear on their search results pages,” id. Here, plaintiff has not alleged that the
`sponsored links display Rescuecom.
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`Case 5:04-cv-01055-NAM-GHL Document 19 Filed 09/28/06 Page 9 of 16
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`summary judgment finding that the defendant’s purchase of the plaintiff’s trademark as a
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`keyword (to generate its ads) was a “use in commerce.” Id. at *3.
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`In 1-800 Contacts the Second Circuit found the court’s rationale in GEICO, which
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`“seemingly based a finding of trademark ‘use’ on the confusion such ‘use’ was likely to cause”,
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`“put the cart before the horse.” 414 F.3d at 412. The court explained:
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`Not only are “use,” “in commerce,” and “likelihood of confusion” three distinct
`elements of a trademark infringement claim, but “use” must be decided as a threshold
`matter because, while any number of activities may be “in commerce” or create a
`likelihood of confusion, no such activity is actionable under the Lanham Act absent
`the “use” of a trademark.
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`Id. (quoting 5 U.S.C. § 1114) (citing People for the Ethical Treatment of Animals v. Doughney,
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`263 F.3d 359, 364 (4th Cir. 2001) (PETA)). Thus, to the extent GEICO and Edina Realty base
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`findings of trademark use on allegations of a likelihood of confusion or commercial use of a
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`mark, they are inconsistent with the law of the Second Circuit which specifies that trademark use,
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`in commerce, and likelihood of confusion are three separate elements. Id.
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`“A ‘trademark use’ . . . is one indicating source or origin”. Pirone v. MacMillan, Inc., 894
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`F.2d 579, 583 (2d Cir. 1990); see also 1-800 Contacts, 414 F.3d at 408 (trademark use “ordinarily
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`at issue in an infringement claim” involves placement of trademarks on “goods or services in
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`order to pass them off as emanating from or authorized by” the trademark owner). The Lanham
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`Act defines “use in commerce,” in relevant part, as follows:
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`For purposes of this chapter, a mark shall be deemed to be in use in commerce-
`(1) on goods when--
`(A) it is placed in any manner on the goods or their containers or the displays
`associated therewith or on the tags or labels affixed thereto, or if the nature of the
`goods makes such placement impracticable, then on documents associated with the
`goods or their sale, and
`(B) the goods are sold or transported in commerce, and
`(2) on services when it is used or displayed in the sale or advertising of services and
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`Case 5:04-cv-01055-NAM-GHL Document 19 Filed 09/28/06 Page 10 of 16
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`the services are rendered in commerce, or the services are rendered in more than one
`State or in the United States and a foreign country and the person rendering the
`services is engaged in commerce in connection with the services.
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`15 U.S.C. § 1127.
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`In this case, plaintiff asserts that defendant sells Rescuecom to plaintiff’s competitors as a
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`keyword that triggers the competitors’ sponsored links to appear on the search results page when
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`an Internet user enters Rescuecom as a search term. Plaintiff contends that defendant’s actions
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`constitute trademark use because: (1) defendant is attempting to “free-ride” on the good will
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`associated with Rescuecom and its activities cause confusion; (2) defendant’s activities lure
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`Internet searchers away and prevent them from reaching plaintiff’s website; (3) defendant’s
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`activities alter the search results an Internet user receives; and (4) defendant uses Rescuecom
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`internally as a keyword that triggers the appearance of competitors’ advertisements.
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`1.
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`Good Will and Confusion
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`Even if plaintiff proved, as it alleges, that defendant is capitalizing on the good will of
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`plaintiff’s trademark by marketing it to plaintiff’s competitors as a keyword in order to generate
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`defendant’s own advertising revenues, that plaintiff’s competitors believed defendant is
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`authorized to sell its trademark, or that Internet users viewing the competitors’ sponsored links
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`are confused as to whether the sponsored links belong to or emanate from plaintiff, none of these
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`facts, alone or together, establish trademark use. In 1-800 Contacts, 414 F.3d at 410, the Second
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`Circuit found that WhenU’s “alleged effort to capitalize on an [Internet] user’s specific attempt to
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`access the 1-800 website” by causing a pop-up ad to appear when an Internet user accessed 1-
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`800’s website, was alone insufficient to show trademark use because “[a]bsent improper use of [a]
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`trademark . . . such conduct does not violate the Lanham Act.” Although these facts may suffice
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`to satisfy the “in commerce” and likelihood of confusion requirements at the pleading stage,
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`without an allegation of trademark use in the first instance, they cannot sustain a cause of action
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`for trademark infringement. Id. at 412 (rejecting the plaintiff’s argument that the defendant’s
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`conduct was use because it was likely to confuse Internet users “as to the source of the ad” on the
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`grounds that use, “in commerce”, and “likelihood of confusion” are distinct elements and that
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`“use” “must be decided as a threshold matter”); see also Merck II, 2006 WL 1418616 at *2
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`(“commercial use is not the equivalent of ‘use in commerce’ for trademark purposes.”).
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`2.
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`Access to the Website
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` Plaintiff also argues that defendant’s use of its mark prevents Internet users from reaching
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`its website because an Internet user who has searched for Rescuecom cannot click on a sponsored
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`link and access plaintiff’s website simultaneously. In support of its argument, plaintiff cites
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`several cases in which the defendants registered domain names that were similar or identical to
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`the plaintiffs’ trademarks. See PETA, 263 F.3d 359 (peta.org); OBH, Inc. v. Spotlight Magazine,
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`Inc., 86 F.Supp.2d 176 (W.D.N.Y. 2000) (thebuffalonews.com); Planned Parenthood Fed’n of
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`Am. v. Bucci, 97 Civ. 0629, 1997 WL 133313 (S.D.N.Y. Mar. 24, 1997)
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`(plannedparenthood.com). In those cases, an Internet user who typed in the plaintiff’s trademark,
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`guessing it to be the plaintiff’s website address, would reach a website that bore the plaintiffs’
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`trademark but criticized or parodied the plaintiffs. The defendants’ actions, therefore, prevented
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`the Internet user from reaching the plaintiffs’ websites directly.
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`In this case, according to the complaint, unlike typing in a trademark as a domain name,
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`which leads directly to a website, typing a trademark into defendant’s search engine leads to a
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`page showing sponsored links and relevant search results, including a link to plaintiff’s website.
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`More importantly, there is no allegation that any of the links among the search results, except
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`those belonging to plaintiff, display plaintiff’s trademark or that defendant’s activities effect the
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`“appearance or functionality” of plaintiff’s website. In 1-800 Contacts, the Second Circuit found
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`the district court’s holding that WhenU, “by ‘causing pop-up advertisements for Defendant
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`Vision Direct to appear when SaveNow users have specifically attempted to access [1-800]’s
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`website, . . . [is] displaying [1-800]’s mark in the . . . advertising of . . . Vision Direct’s services’”
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`was “fatal[ly] flaw[ed]” because “WhenU’s pop-up ads do not display the 1-800 trademark” and
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`had “absolutely no tangible effect on the appearance or functionality of the 1-800 website.”. 414
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`F.3d at 410. Thus, plaintiff’s allegation that defendant’s activities prevent an Internet user from
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`reaching plaintiff’s website, even if true, would not entitle plaintiff to relief under the Lanham
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`Act in the absence of an allegation that defendant made a trademark use of Rescuecom in the first
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`instance.
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`3.
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`Alteration of Search Results
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`In an effort to allege trademark use, plaintiff also asserts that defendant’s sale of
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`Rescuecom as a keyword to plaintiff’s competitors alters the search results an Internet user
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`receives when he or she searches for Rescuecom, diverting and misdirecting Internet users away
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`from its website. In 1-800 Contacts, the Second Circuit found it significant that WhenU’s
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`activities did not “alter in any way the results a C-user will obtain when searching with the 1-800
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`trademark”, and distinguished WhenU’s activities on that basis from Playboy Enters., Inc. v.
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`Netscape Communications Corp., 354 F.3d 1020, 1024 (9th Cir. 2004) (holding that infringement
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`could be based on the defendant's insertion of unidentified banner ads on Internet user's search-
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`results page); Brookfield Communications v. West Coast Entm't Corp., 174 F.3d 1036 (9th Cir.
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`1999) (holding that the defendant's use of trademarks in “metatags,” invisible text within websites
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`that search engines use for ranking results, constituted a “use in commerce” under the Lanham
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`Act); and Bihari v. Gross, 119 F.Supp.2d 309 (S.D.N.Y. 2000) (discussing Brookfield and similar
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`cases). In distinguishing those cases, however, the Second Circuit noted that it did “not
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`necessarily endorse their holdings.” Id. at 411, n.15 (citing Playboy, 354 F.3d at 1034-36 (Berzon,
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`C.J., concurring)).5 Moreover, plaintiff’s allegation that defendant’s activities alter search results
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`does not show trademark use because here, unlike Playboy Enters., Brookfield Communications,
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`and Bihari, there is no allegation that plaintiff’s trademark is displayed in any of the sponsored
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`links about which plaintiff is concerned, cf. GEICO, 330 F.Supp.2d at 704 (“[a]ccepting as true
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`the facts alleged by plaintiff regarding the inclusion of the marks in advertisements and
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`defendants’ overall control of their advertising program, we find that plaintiffs have alleged facts
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`sufficient to support their claims that advertisers make a “trademark use” of the plaintiffs’ mark)
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`(emphasis added), or that defendant’s activities prevent a link to plaintiff’s website from
`
`appearing on the search results page. Thus, according to the complaint, an Internet user who
`
`enters Rescuecom into Google as a search term, may still go to plaintiff’s website(s) by clicking
`
`on the appropriate link on the search results page – even though he or she may have other choices.
`
`In 1-800 Contacts, the Second Circuit found that WhenU’s “alleged effort to capitalize on an
`
`[Internet] user’s specific attempt to access the 1-800 website” by causing a pop-up ad to appear
`
`N
`
`A
`
`M
`
`5 Additionally, none of these cases address whether the defendant’s use of the trademark at issue is, in the
`first place, a trademark use. In Playboy, the Ninth Circuit expressly stated that “use in commerce” was
`undisputed. 354 F.3d at 1024 (“PEI clearly holds the marks in question and defendants used the marks in
`commerce”); see also Brookfield, 174 F.3d at 1062-66 (finding the defendant’s use of trademarks in
`metatags caused “initial interest confusion” and therefore violated the Lanham Act). In Bihari, the court
`held that the defendant’s use of the plaintiff’s trademarks in metatags on its websites was a “use in
`commerce” because they “effectively act[ed] as a conduit, steering potential customers away from [the
`plaintiff’s business] and toward its competitors”. 119 F.Supp.2d at 318. Thus, plaintiff’s reliance on these
`cases as authority for the proposition that defendant’s “invisible” use of Rescuecom may constitute a
`trademark use, is unavailing.
`
`13
`
`

`
`Case 5:04-cv-01055-NAM-GHL Document 19 Filed 09/28/06 Page 14 of 16
`
`when an Internet user accessed 1-800’s website, was alone insufficient to show trademark use,
`
`positing the following analogy:
`
`Indeed, it is routine for vendors to seek specific “product placement” in retail stores
`precisely to capitalize on their competitors' name recognition. For example, a drug
`store typically places its own store-brand generic products next to the trademarked
`products they emulate in order to induce a customer who has specifically sought out
`the trademarked product to consider the store's less-expensive alternative. WhenU
`employs this same marketing strategy by informing C-users who have sought out a
`specific trademarked product about available coupons, discounts, or alternative
`products that may be of interest to them.
`
`N
`
`414 F.3d at 410-11. Thus, plaintiff has failed to allege any facts which would show that
`
`defendant’s activities, even if they alter the search results, constitute a trademark use as a matter
`
`of law.
`
`4.
`
`Internal Use
`
`Defendant’s internal use of plaintiff’s trademark to trigger sponsored links is not a use of a
`
`A
`
`trademark within the meaning of the Lanham Act, either, because there is no allegation that
`
`defendant places plaintiff’s trademark on any goods, containers, displays, or advertisements, or
`
`that its internal use is visible to the public. In 1-800 Contacts, the Second Circuit held that a:
`
`company’s internal utilization of a trademark in a way that does not communicate it
`to the public is analogous to a individual’s private thoughts about a trademark. Such
`conduct simply does not violate the Lanham Act, which is concerned with the use of
`trademarks in connection with the sale of goods or services in a manner likely to lead
`to consumer confusion as to the source of such goods or services.
`
`M
`
`414 F.3d at 409; see also Merck I, 425 F.Supp.2d at 415 (This internal use of the mark “Zocor” as
`
`a key word to trigger the display of sponsored links is not use of the mark in a trademark sense.);6
`
`6 In granting the defendants’ motion to dismiss, the court also found it significant “that defendants
`actually sell Zocor . . . on their websites” and held “[u]nder these circumstances, there is nothing improper
`with defendants’ purchase of sponsored links to their websites from searches of the keyword ‘Zocor.’”
`Merck I, 2006 WL 800756 at *9.
`
`14
`
`

`
`Case 5:04-cv-01055-NAM-GHL Document 19 Filed 09/28/06 Page 15 of 16
`
`Merck II, 2006 WL 1418618 at *2 (“This internal use of the mark ‘Zocor’ as a key word to trigger
`
`the display of sponsored links is not use of the mark in a trademark sense; rather, this use is more
`
`akin to the product placement marketing strategy employed in retail stores, where, for example, a
`
`drug store places its generic products alongside similar national brand products to capitalize on
`
`the latter’s name recognition.”). Thus, in the absence of allegations that defendant placed
`
`plaintiff’s trademark on any goods, displays, containers, or advertisements, or used plaintiff’s
`
`trademark in any way that indicates source or origin, plaintiff can prove no facts in support of its
`
`claim which would demonstrate trademark use. Accordingly, defendant’s motion to dismiss
`
`Counts I and II is granted.
`
`C.
`
`Dilution of Trademark – 15 U.S.C. § 1125(c)
`
`Defendant also seeks dismissal of plaintiff’s federal dilution claim (Count III), which,
`
`defendant asserts, requires proof of trademark use. The federal antidilution act provides:
`
`The owner of a famous mark shall be entitled, subject to the principles of equity and
`upon such terms as the court deems reasonable, to an injunction against another
`person's commercial use in commerce of a mark or trade name, if such use begins
`after the mark has become famous and causes dilution of the distinctive quality of the
`mark . . . .
`
`15 U.S.C. § 1125(c)(1) (emphasis added). To establish trademark dilution under § 43(c) of the
`
`Lanham Act, 15 U.S.C. § 1125(c), plaintiff must show (1) their mark is famous within the
`
`meaning of the statute; and (2) defendant’s use caused actual dilution of the mark. Savin Corp. v.
`
`Savin Group, 391 F.3d 439, 455 (2d Cir. 2004). Here, as discussed, plaintiff can prove no set of
`
`facts showing trademark use in the first instance. See also U-Haul Intern. Inc. v. WhenU.com,
`
`Inc., 279 F.Supp.2d 723, 729 (E.D.Va. 2003) (entering judgment as a matter of law for the
`
`defendant on the plaintiff’s claim of trademark dilution because the plaintiff was “unable to show
`
`N
`
`A
`
`M
`
`15
`
`

`
`Case 5:04-cv-01055-NAM-GHL Document 19 Filed 09/28/06 Page 16 of 16
`
`that WhenU was using U-Haul’s marks as defined in the Lanham Act.”). Accordingly,
`
`defendant’s motion to dismiss Count III is granted.
`
`D.
`
`Pendent State Law Claims – Trademark Infringement, Trademark Dilution
`under N.Y. Gen. Bus. Law § 360-L, and Tortious Interference with Economic
`Advantage
`
`In the complaint, plaintiff alleges that the Court has supplemental jurisdiction over its
`
`pendent state law claims pursuant to 28 U.S.C. § 1367. The Court, however, has dismissed
`
`plaintiff’s federal claims and be

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