Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA553281
`ESTTA Tracking number:
`08/09/2013
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`Petition for Cancellation
`
`Notice is hereby given that the following party requests to cancel indicated registration.
`Petitioner Information
`
`Name
`Entity
`Address
`
`Google Inc.
`Corporation
`1600 Amphitheatre Parkway
`Mountain View, CA 94043
`UNITED STATES
`
`Citizenship
`
`Delaware
`
`Attorney
`information
`
`Margret M. Caruso
`Quinn Emanuel Urquhart & Sullivan LLP
`555 Twin Dolphin Dr. 5th Fl.
`Redwood Shores, CA 94065
`UNITED STATES
`margretcaruso@quinnemanuel.com, brettarnold@quinnemanuel.com,
`sherrinvanetta@quinnemanuel.com Phone:650-801-5000
`Registration Subject to Cancellation
`
`Registration No
`Registrant
`
`3500783
`PARTS.COM, LLC
`510 S. CONGRESS AVE. SUITE 202
`AUSTIN, TX 78704
`UNITED STATES
`Goods/Services Subject to Cancellation
`
`Registration date
`
`09/16/2008
`
`Class 035. First Use: 1999/03/30 First Use In Commerce: 1999/03/30
`All goods and services in the class are cancelled, namely: Marketing services, namely, providing
`informational web pages designed to generate sales traffic via hyperlinks to other web sites;
`promoting the goods and services of others by providing hypertext links to the websites of others;
`providing a website which features advertisements for the goods and services of others on a global
`computer network; providing on-line directory information services also featuring hyperlinks to other
`websites; online auction services
`Class 042. First Use: 1999/03/30 First Use In Commerce: 1999/03/30
`All goods and services in the class are cancelled, namely: Computer services, namely, acting as an
`application service provider in the field of knowledge management to host computer application
`software for searching and retrieving information from databases and computer networks; data
`mining via global computer networks; computer services, namely, creating indexes of information,
`sites and other information resources via global computer networks
`
`Grounds for Cancellation
`
`Genericness
`The mark is merely descriptive
`
`Trademark Act section 23
`Trademark Act section 2(e)(1)
`
`Related
`Proceedings
`
`Parts.com, LLC v. Google Inc., 13-cv-1074-JLS-WMC (S.D. Cal. filed May 6,
`2013)
`
`

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`Attachments
`
`Petition to Cancel and Exhibit A.pdf(1366683 bytes )
`
`Certificate of Service
`
`The undersigned hereby certifies that a copy of this paper has been served upon all parties, at their address
`record by USPS Express Mail Post Office to Addressee on this date.
`
`Signature
`Name
`Date
`
`/Brett J. Arnold/
`Brett J. Arnold
`08/09/2013
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Registration No. 3,500,783
`Registered Sept. 16, 2008
`Mark: PARTS.COM
`
`GOOGLE INC.,
`
`-against-
`
`PARTS.COM, LLC,
`
`Petitioner,
`
`Respondent.
`
`TO THE COMMISSIONER FOR TRADEMARKS:
`
`Cancellation No.
`
`PETITION TO CANCEL
`
`Petitioner Google Inc. believes it is, and will continue to be, damaged by the
`
`existence of Registration Number 3,500,783 for the mark PARTS.COM and hereby petitions to
`
`cancel the same pursuant to Sections 14(3) and 45 of the Trademark Act of 1946, as amended
`
`(the “Lanham Act”), 15 U.S.C. §§ 1064(3), 1127.
`
`1.
`
`Google Inc. (“Google”) is a Delaware corporation with its principal place of
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`business located at 1600 Amphitheatre Parkway, Mountain View, California 94043.
`
`2.
`
`According to Registration Number 3,500,783, Respondent Parts.com, LLC
`
`(“Parts.com”) is a Delaware limited liability company located at 510 S. Congress Ave. Suite 202,
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`Austin, Texas 78704. On information and belief, Parts.com’s principal place of business is 2196
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`Carmel Valley Road, 3rd Floor, Del Mar, California 92014.
`
`

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`3.
`
`On information and belief, Respondent Parts.com is the owner of the intemet
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`website “www.parts.com” and is primarily engaged in the business of operating that website as
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`an online retail source for automotive replacement parts, accessories, and catalogues.
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`4.
`
`Respondent Parts.com is currently listed as the owner of the above-named
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`Registration No. 3,500,783 for the designation PARTS.COM in connection with “marketing
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`services” and “computer services” in International Classes 35 and 42 (the “Registration”). The
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`Registration was issued on September 16, 2008.
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`5.
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`The Registration states that it was originally issued to an entity named Intelligentz
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`Corporation, a Delaware Corporation located at 115 E. 5th Street, Suite 200, Austin, Texas
`
`78701.
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`6.
`
`In the Registration, Intelligentz Corporation alleged that it first used the
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`PARTS.COM designation in U.S. commerce in connection with marketing and computer
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`services on March 30, 1999.
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`7.
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`The registered mark PARTS.COM is a generic term for the marketing and
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`computer services offered by Respondent Parts.com and every other competitor engaged in such
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`business. Respondent’s registered mark does not function to identify Respondent’s goods and
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`services and distinguish them from the goods and services offered by others. Instead, it is the
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`category or genus of which the goods and services of Respondent and its competitors are the
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`species.
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`8.
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`The mark PARTS.COM also has not acquired distinctiveness and therefore does
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`not function to identify Respondent’s goods and services and distinguish them from the goods
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`and services offered by others.
`
`

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`9.
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`Petitioner Google is being damaged and will likely continue to be damaged by
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`registration of this generic and non-distinctive term. On May 6, 2013, Respondent Parts.com
`
`sued Petitioner Google in the United States District Court for the Southern District of California,
`
`13-CV-1074-JLS-WMC (the “District Court action”) alleging that Google has engaged in
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`unauthorized use of the Registration constituting false designation of origin, unfair competition,
`
`and trademark infringement and dilution in violation of the Lanham Act and California state law.
`
`A true and correct copy of the Complaint from the District Court action as retrieved from
`
`PACER is attached as Exhibit A.
`
`10.
`
`In the District Court action, Parts.com has claimed that as a result of Google’s
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`alleged use of the Registration, Parts.com has lost online sales of automotive parts and
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`accessories in excess of $2 million per year and that Google is liable for this amount. Parts.com
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`has also sought additional relief, including a trebling of its alleged damages, an accounting of
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`Google’s alleged profits from use of the Registration, and punitive damages, along with costs,
`
`fees, and interest. If the Registration were cancelled, Google wo11ld not be subj ect to this
`
`potential liability.
`
`11.
`
`Cancellation of the Registration should be granted on the grounds that the
`
`Registration is generic and therefore unprotectable pursuant to the Lanham Trademark Act, 15
`
`U.S.C. §§ 1052(e) & (f), 15 U.S.C. § 1064(3), and 15 U.S.C. § 1065(4).
`
`12.
`
`In the alternative, cancellation of the Registration should be granted on the
`
`grounds it is merely descriptive and lacking acquired distinctive as required by Sections 2(e) and
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`2(f) of the Lanham Trademark Act, 15 U.S.C. §§ 1052(e) & (1).
`
`

`
`WHEREFORE, Petitioner Google believes it is being damaged and will continue
`
`to be damaged by Registration No. 3,500,783 and respectfully requests that this Petition for
`
`Cancellation be sustained and Registration No. 3,500,783 be cancelled as to all classes.
`
`Pursuant to 37 C.F.R. § 2.6(a)(16), please charge Deposit Account Number 50-
`
`5708 the requisite amount of six hundred dollars ($600.00) to cover the statutory fee for filing a
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`petition for cancellation in two International Classes. Please also charge any additional amounts
`
`to Deposit Account Number 50-5708.
`
`All communication should be addressed to Petitioner’s counsel, Quinn Emanuel
`
`Urquhart & Sullivan, LLP, at the address below.
`
`Dated: August 9, 2013
`
`Respectfully submitted,
`
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`
`_
`
`l’
`
`.12.»; euro"
`
`By
`
`Ir
`
`//
`2'
`.% .
`Margre Myifiaruso (
`L"
`555 Tivin Dolphin Dr., 5th Fl.
`Redwood Shores, CA 94065
`Tel: (650) 801-5000
`Fax: (650) 801-5100
`
`Attorneys for Petitioner Google Inc.
`
`

`
`CERTIFICATE OF SERVICE
`
`I certify that on August 9, 2013 I caused a true copy ofPetitioner’s PETITION TO
`
`CANCEL and EXHIBIT A to be served via the “Express Mail” service of the United States
`
`Postal Service on Lee C. Heiman, the correspondent of record for Registration No. 3,500,783, at
`
`the address below:
`
`Lee C. Heiman
`
`1 12 S W St
`
`Alexandria, Virginia 223 14-2825
`
`Brett .1. Arnold
`
`

`
`
`
`Exhibit A
`Exhibit A
`
`

`
`Case 3:13-cv-01074-JLS-WMC Document 1 Filed 05/06/13 Page 1 of 17
`
`
`JAMES V. FAZIO, III (CSB NO. 183353)
`jamesfazio@sandiegoiplaw.com
`TREVOR Q. CODDINGTON, PH.D. (CSB NO. 243042)
`trevorcoddington@sandiegoiplaw.com
`SAN DIEGO IP LAW GROUP LLP
`12526 High Bluff Drive, Suite 300
`San Diego, CA 92130
`Telephone: (858) 792-3446
`Facsimile: (858) 792-3447
`
`
`
`Attorneys for Plaintiff
`PARTS.COM, LLC
`
`UNITED STATES DISTRICT COURT
`
`SOUTHERN DISTRICT OF CALIFORNIA
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`PARTS.COM, LLC,
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`'13CV1074
`CASE NO.
`
`
`JLS
`
`
`WMC
`
`
`
`
`12
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`13
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`vs.
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`Plaintiff,
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`GOOGLE INC.,
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`Defendant.
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`COMPLAINT FOR:
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`(1) FEDERAL TRADEMARK
`INFRINGEMENT;
`(2) FEDERAL FALSE DESIGNATION
`OF ORIGIN AND UNFAIR
`COMPETITION;
`(3) COMMON LAW TRADEMARK
`INFRINGEMENT AND UNFAIR
`COMPETITION;
`(4) UNFAIR AND DECEPTIVE
`TRADE PRACTICES;
`(5) FEDERAL TRADEMARK
`DILUTION; AND
`(6) STATE TRADEMARK DILUTION
`AND INJURY TO BUSINESS
`REPUTATION
`
`DEMAND FOR JURY TRIAL
`
`
`
`
`
`
`
`COMPLAINT
`
`

`
`Case 3:13-cv-01074-JLS-WMC Document 1 Filed 05/06/13 Page 2 of 17
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`Plaintiff Parts.com, LLC (“Parts.com”) hereby complains of Defendant Google Inc.
`
`(“Google”) and alleges as follows:
`
`INTRODUCTION
`
`1.
`
`This is an action at law and in equity for federal and state trademark infringement,
`
`trademark dilution, unfair competition, and related claims arising under California state law, the
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`Lanham Act, 15 U.S.C. § 1051 et seq., and federal and state common law.
`
`THE PARTIES
`
`2.
`
`Plaintiff Parts.com, LLC (“Parts.com”) is a Delaware limited liability company
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`with its principal place of business located at 2196 Carmel Valley Road, 3rd Floor, Del Mar,
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`California 92014.
`
`3.
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`Defendant Google is a Delaware corporation with its principal place of business
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`located at 1600 Amphitheatre Parkway, Mountain View, California 94043.
`
`JURISDICTION AND VENUE
`
`4.
`
`This Court has subject matter jurisdiction under section 39 of the Lanham Act, 15
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`U.S.C. § 1121, and under 28 U.S.C.§§ 1331 and 1338. This Court has subject matter jurisdiction
`
`over Parts.com’s related state and common law claims under 28 U.S.C. §§ 1338(b) and 1367.
`
`5.
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`This Court has personal jurisdiction over Google because Google resides in
`
`California and has committed and continues to commit acts of infringement and other violations
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`in California (and in this District), and because Google regularly transacts and conducts business
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`in California (and in this District).
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`6.
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`Venue is proper in this District under 28 U.S.C. § 1391(b) and (c) because a
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`substantial part of the acts or omissions giving rise to the claims in this action have occurred in
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`this District, and because a substantial part of the property that is the subject of this action is
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`located in this District.
`
`GENERAL ALLEGATIONS
`
`Parts.com And Its Mark
`
`7.
`
`Parts.com is the online source of over 20 million automotive replacement parts,
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`accessories, catalogues and related automotive materials and equipment for over 40 automobile
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`
`
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`
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`-1-
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`
`
`COMPLAINT
`
`

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`Case 3:13-cv-01074-JLS-WMC Document 1 Filed 05/06/13 Page 3 of 17
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`manufacturers worldwide. Parts.com is the owner of the internet domain www.parts.com and is
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`the owner by assignment of the federally registered trademark parts.com® issued on September
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`16, 2008 (a copy of which is attached hereto as Exhibit A). Parts.com relies almost exclusively
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`on the internet and its website as a source of business.
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`8.
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`Since at least January, 2000, Parts.com has been continuously engaged in the
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`business of selling or sourcing automotive replacement parts, accessories, catalogues and related
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`automotive materials and equipment under the parts.com® mark. During that time, Parts.com has
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`expended a significant amount of resources in developing goodwill and brand recognition in and
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`for the parts.com® mark.
`
`Google’s Search Engine
`
`9.
`
`Google owns and operates one of the world’s most-widely Internet search engines.
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`A search engine is a computer program that allows computer users to search the World Wide
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`Web for websites containing particular content. Google’s search engine is available not only on
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`its website (www.google.com), but also on other popular websites that use its search engine.
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`10.
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`To use Google’s search engine, a World Wide Web user need only type a few
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`words and hit “enter” (or click on the “Google search” button) to receive a list of hyperlinks to
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`web pages that Google identifies as having content response to the user’s search query. Web
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`users may then visit these pages by clicking on the links that Google provides. Google maintains
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`and, on information and belief, many consumers believe, that search results Google returns are
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`the product of an objective formula or algorithm that produces “natural” or “organic” results, i.e.,
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`web listings the display and placement of which are not affected by payments to Google from
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`website owners.
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`11.
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`Google, however, does not only provide Internet users with such “organic” search
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`results. Without authorization or approval by Parts.com, Google has sold to third parties the
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`“right” to use the parts.com® mark or terms and phrases including or containing confusingly
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`similar terms, as “keyword” triggers that cause paid advertisments, which Google calls
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`“Sponsored Links,” to be displayed above or alongside the “organic” search results. In many
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`cases, the text and titles of these “Sponsored Links” include the parts.com® mark or terms
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`
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`-2-
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`
`
`COMPLAINT
`
`

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`Case 3:13-cv-01074-JLS-WMC Document 1 Filed 05/06/13 Page 4 of 17
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`containing the mark. Thus, when consumers enter the parts.com® mark into a Google search
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`query, instead of being directed to Parts.com’s website, Google’s “Sponsored Links” may instead
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`misdirect them to third party websites that compete with Parts.com or that unrelated to Parts.com.
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`On information and belief, the display and placement of these “Sponsored Links” is not arbitrary
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`but rather is substantially determined or influenced by the amount of money Google receives
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`from advertisers.
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`12.
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`Google’s misuse of the parts.com® mark and phrases including the mark in the
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`display of “Sponsored Links” falsely communicates to consumers that Google’s advertisers are
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`official or sanctioned Parts.com affiliates, or that Parts.com sponsors or endorses Google’s
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`advertisers.
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`13.
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`Further, when some web users click on the links that Google’s advertisers pay to
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`place above or alongside objective “organic” search results in order to seek information about
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`Parts.com’s goods or services, they are deceived into thinking that they will be provided with
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`official information about Parts.com’s goods and services from Parts.com. On information and
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`belief, however, some of these links and the websites to which they lead provide no such
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`information. In fact, in some or many instances, these links lead to websites that offer goods and
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`services competitive with Parts.com.
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`14.
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`On information and belief, Google also employs other advertising programs that
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`utilize similar types of keywords, including without limitation the parts.com® mark or phrases
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`containing the mark, to cause advertisements to appear on websites across the Internet that
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`themselves display the parts.com® mark or terms containing the mark. On information and
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`belief, many of these advertisements lead Internet users to websites that are not affiliated or
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`associated with Parts.com.
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`Google’s Search Engine-Based Keyword Advertising Program
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`15.
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`Google’s search engine is available through its website at www.google.com.
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`Google also licenses its search engine to other popular websites such as America Online,
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`Netscape, Earthlink, CompuServe, Shopping.com and ask.com. In addition, Google invites
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`consumers to affix a “Google Toolbar” at the top of Internet users’ Internet browsers that allows
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`-3-
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`
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`COMPLAINT
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`

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`Case 3:13-cv-01074-JLS-WMC Document 1 Filed 05/06/13 Page 5 of 17
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`users to conduct Google searches even when they are not currently visiting www.google.com or a
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`website that features Google’s search engine.
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`16.
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`Google’s Internet advertising programs (and specifically its AdWords program)
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`allow advertisers to place targeted advertising on the results page of a Google search. When a
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`user types a query into Google’s search engine, that query can trigger advertisements—or
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`Sponsored Links-that will be displayed in two locations on the search results page: (1) the right
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`hand column of the page under a heading titled “Sponsored Links”; and (2) above the natural
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`search results, with a colored background, next to an insignia that says “Sponsored Links”. The
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`ads contain text and a link to the advertiser’s website. In order to have their ads appear on
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`Google’s search results page, Google advertisers bid on keywords or keywords phrases. If a
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`user’s search terms match the keyword or keyword phrase, the advertiser’s ad is displayed on the
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`search results pages. According to Google’s 2012 Form 10-K at page 33, approximately 95% of
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`Google’s revenues is derived from sales of advertising.
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`17.
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`On information and belief, in a substantial portion of searches, Google’s AdWords
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`program makes two distinct uses of a given keyword on behalf of a paying advertiser. First,
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`Google uses the keyword to trigger the “Sponsored Link” advertisements. Second, Google
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`sometimes publishes the keyword as part of the advertisement itself. Accordingly, when the
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`keyword in question is a trademark, Google can make confusing use of that mark in two different
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`ways: (1) as a keyword trigger; and (2) as part of the advertisement itself.
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`18.
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`On several instances from 2007 to the present, an internet search of the term
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`“parts.com” using Google’s search engine returned a result listing two or more sponsored links
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`bearing the title “Parts.com” that linked to the websites of third party entities unrelated or
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`unaffiliated with Parts.com. A copy of two searches conducted on April 18, 2013 and April 26,
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`2013 are attached collectively hereto as Exhibit B. This same search on other search engines such
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`as ask.com does not return this result. Parts.com does not sponsor a link on Google. Google’s
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`sponsored links have caused significant initial interest confusion and have diverted and continue
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`to divert internet traffic and sales leads from Parts.com to unrelated or competitive entities,
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`resulting in lost sales, loss of goodwill, trademark dilution and damages to Parts.com. Upon
`
`
`
`
`
`
`-4-
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`
`
`COMPLAINT
`
`

`
`Case 3:13-cv-01074-JLS-WMC Document 1 Filed 05/06/13 Page 6 of 17
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`information and belief, Google has received significant compensation from advertisers and
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`vendors unaffiliated with Parts.com by illegally using and selling the parts.com® mark as a
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`keyword to advertisers to divert and drive internet traffic to these other advertisers and vendors
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`via Google sponsored links.
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`19.
`
`In 2004, internal studies performed by Google indicated there was significant
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`source confusion among Internet searchers when trademarks were included in the title or body of
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`advertisements. Parts.com’s parts.com® mark is included in the title, i.e., hyperlink, of Google’s
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`advertisements as alleged herein.
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`Google’s Willful Infringement and Unwillingness to Refrain From Trademark
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`Infringement
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`20.
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`On information and belief, Google has the ability to refrain from infringing
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`trademarks in connection with its keyword search advertising programs like Adwords.
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`21.
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`Google stated in one of its SEC filings that it formerly did not allow advertisers to
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`use the trademarks of others as keyword triggers. See, Google’s Form S-1 Registration
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`Statement, Google Inc. dated April 29, 2004 at p. 10.
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`22.
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`Consistent with that statement, in a declaration filed by Google in the case entitled
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`American Blind and Wallpaper Factory, Inc. v. Google, Inc., et al. in the Southern District of
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`New York, Google’s Senior Trademark Counsel asserted on April 7, 2004 that Google had the
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`capability to block its advertisers from using non-descriptive trademarks as keyword triggers.
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`See, Declaration of Rose A. Hagan in Support of Google’s Motion to Dismiss or, In The
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`Alternative, To Transfer Venue, filed April 9, 2004 at ¶ 4.
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`23.
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`Now, however, Google allows advertisers to purchase specific trademarks as
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`keyword triggers for Sponsored Link advertisements. In its 2004 S-1, Google stated:
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`In order to provide users with more useful ads, we have recently revised our
`trademark policy in the U.S. and Canada. Under our new policy, we no
`longer disable ads due to selection by our advertisers of trademarks as
`keyword triggers for the ads.
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`Google S-1, at p. 10.
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`24.
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`Google acknowledged that it anticipated additional trademark infringement
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`lawsuits as a result of its revised advertising policy:
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`As a result of this change in policy, we may be subject to more trademark
`infringement lawsuits . . . . Adverse results in these lawsuits may result in,
`or even compel, a change in this practice which could result in a loss of
`revenue for us, which could harm our business.
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`Google S-1, at p. 10.
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`25.
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`Conversely, Google maintains an extensive trademark policy regarding confusing
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`use of its own marks. A would-be user of a Google mark must (among other things) “use the
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`trademark only as an adjective, never as a noun or verb, and never in the plural or possessive
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`form,” and must put “a minimum of 25 pixels between each side of the logo and other graphic or
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`textual elements on [the user’s] web page.” Google Permissions,
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`http://www/google.com/permissions/guidelines.html. (last accessed April 30, 2013). In other
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`words, Google instructs the world (among other things) that “you can't mess around with our
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`marks. Only we get to do that. Don't remove, distort or alter any element of a Google Brand
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`Feature. That includes modifying a Google trademark, for example, through hyphenation,
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`combination or abbreviation, such as: Googliscious, Googlyoogly, GaGooglemania. Do not
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`shorten, abbreviate, or create acronyms out of Google trademarks.”
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`http://www/google.com/permissions/guidelines.html. (last accessed April 30, 2013). When, for
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`example, a would-be user attempts to use “Google” as a keyword trigger for an advertisement,
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`Google immediately blocks the attempt and indicates: “This ad does not meet our editorial
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`guidelines. Please correct these problems.” Yet, Google does not treat the marks of other
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`companies like Parts.com with such respect.
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`26.
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`For example, a would-be user who attempts to use “Google.com” as part of its
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`advertisement would receive a rejection or disapproval from Google in substantially the following
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`form:
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`====================
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`Disapproval Reason
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`====================
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`[Display URL] Inaccurate Display URL: Your display URL must accurately
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`reflect the URL of your website. Please follow the guidelines below.
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`1. Use the same domain name in your display URL and destination URL.
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`For example, if you’re advertising example.com, you can’t use google.com
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`as your display URL.
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`2. Use the same domain extension in your display URL and destination URL.
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`For example, if you’re advertising example.com, you can’t use
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`example.co.uk as your display URL.
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`
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`3. Don’t redirect users to a different destination URL. For example, if
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`you’re advertising example.com, example.com can’t redirect users to
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`google.com. Redirects used for tracking purposes are fine if the final
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`destination URL uses the same domain as the display URL.
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`27.
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`On November 20, 2007, attorney Stacy Allen notified Google by letter of Google’s
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`unauthorized sponsored links using parts.com and demanded that Google cease and desist from
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`use of the sponsored links to unrelated entities. A signed copy of that November 20, 2007 letter
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`cannot presently be found. However, an unsigned copy of that letter, together with an attestation
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`by Allen that the letter was in fact sent, are attached collectively hereto as Exhibit C. Google
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`never responded to that letter and never ceased unauthorized use of the parts.com sponsored links,
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`which establishes that Google’s trademark infringement and other violations of federal and state
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`laws are and have been willful since at least November 20, 2007.
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`28.
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`On December 28, 2007, Michael Lucas of Intelligentz Corporation emailed Bonita
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`Stewart at Google and again complained of Google’s unauthorized use of the parts.com
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`sponsored links to divert Internet traffic away from Parts.com’s website. On January 2, 2008,
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`Ms. Stewart responded to Mr. Lucas’s email and suggested that he file for trademark protection of
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`parts.com. A copy of this email exchange is attached hereto as Exhibit D. The parts.com®
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`trademark registration certificate issued on September 16, 2008, which was subsequently assigned
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`from Intelligentz Corporation to Parts.com on January 1, 2012 (a copy of the Notice of
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`Recordation of Assignment dated February 24, 2012 is attached hereto as Exhibit E).
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`Google’s Unauthorized Use of the Parts.com® Mark
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`29.
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`Parts.com has not directly or indirectly given Google any permission, authority or
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`license to use or sell the right to use the parts.com® mark for the promotion of the goods or
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`services of any third parties.
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`30.
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`Nevertheless, Parts.com is informed and believes and based thereon alleges that
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`Google has in fact sold to third party advertisers the right to “use” the parts.com® mark as part of
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`Google’s search engine-based advertising program. As a result, Google sells advertising and the
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`links to websites using the parts.com® mark that are unaffiliated and unassociated with
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`Parts.com. In fact, many of Google’s “Sponsored Links” containing parts.com draw consumers
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`away from Parts.com’s website.
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`31. Moreover, Google’s use of the parts.com® mark within the titles and text that
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`Google posts as part of some “Sponsored Links” misleadingly communicates to users that such
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`links are endorsed or sponsored by Parts.com, or that such websites are official Parts.com
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`affiliates or websites when they are not.
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`32.
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`Even if users realize that a given website is not affiliated with Parts.com, once
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`users reach the third party advertiser’s website while intending to shop for parts.com, initial
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`interest confusion has occurred and the damage to Parts.com is done. Many consumers or users
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`are likely either to stay at the third party advertiser’s website or to stop searching for Parts.com’s
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`website. Web users may also associate the quality of the products and services offered on the
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`third party advertiser’s website with those offered by Parts.com and, if not satisfied with such
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`goods and services, may decide to avoid Parts.com’s products and services in the future.
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`33.
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`Although these examples are illustrative of the problems created by Google, they
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`are not exhaustive and do not describe all the means by which Google’s infringing use of the
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`parts.com® mark is likely to mislead or confuse consumers. Because of the dynamic nature of
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`Google’s algorithms, programming and display advertising, Google either is misleading or will
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`mislead consumers in innumerable different ways. Accordingly, it is impossible for Parts.com to
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`COMPLAINT
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`Case 3:13-cv-01074-JLS-WMC Document 1 Filed 05/06/13 Page 10 of 17
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`cure this problem merely by pursuing remedies against Google’s third party advertisers.
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`34.
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`As a result of Google’s infringement of the parts.com® mark and other
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`misconduct, Parts.com can demonstrate it has lost revenues from online sales of parts and
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`accessories of at least $2 million per year.
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`FIRST CLAIM FOR RELIEF
`(Federal Trademark Infringement)
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`35.
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`Parts.com realleges and incorporates by references paragraphs 1 through 34 of this
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`Complaint as though set forth fully herein.
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`36.
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`This cause of action arises under Section 32 of the Lanham Act, 15 U.S.C. §1114,
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`for infringement of a federally registered trademark.
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`37.
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`Google’s unauthorized use of the term parts.com to sponsor or provide links to the
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`websites of vendors unaffiliated and unassociated with Parts.com is likely to cause confusion,
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`mistake and/or deception as to the origin or source of the goods and services associated with the
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`Parts.com® mark, to cause initial interest confusion and also to mislead consumers into believing
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`such goods and services originate from, are affiliated with, or are sponsored, authorized, approved
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`or sanctioned by Parts.com.
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`38.
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`Google’s unauthorized use in commerce of the keyword or term parts.com to
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`sponsor or provide links to the websites of third party advertisers and vendors unaffiliated and
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`unassociated with Parts.com constitutes infringement of Parts.com’s federally registered
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`trademark parts.com®.
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`39.
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`Google’s acts and misconduct alleged herein have caused and will continue to
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`cause Parts.com monetary damages, loss and injury in an amount not yet ascertained but in excess
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`of the jurisdictional requirement of this Court.
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`40.
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`Google’s acts and misconduct alleged herein have been and continue to be willful.
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`41.
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`Unless and until enjoined by this Court, Google’s acts and misconduct will
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`continue to cause Parts.com irreparable damage, loss and injury for which Parts.com has no
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`adequate remedy at law.
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`SECOND CLAIM FOR RELIEF
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`COMPLAINT
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`Case 3:13-cv-01074-JLS-WMC Document 1 Filed 05/06/13 Page 11 of 17
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`(Federal False Designation of Origin and Unfair Competition)
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`42.
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`Parts.com realleges and incorporates by references paragraphs 1 through 41 of this
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`Complaint as though set forth fully herein.
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`43.
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`This cause of action arises under Section 43(a) of the Lanham Act, 15 U.S.C.
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`§1125(a), for false designation of origin and unfair competition.
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`44.
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`As the exclusive owner and user of the parts.com® mark, Parts.com possesses
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`valuable common law rights to the mark and the goodwill associated with it.
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`45.
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`Google’s unauthorized use of the term parts.com to sponsor or provide links to the
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`websites of vendors unaffiliated and unassociated with Parts.com constitutes use in commerce of
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`a false designation of origin that is likely to cause confusion, or to cause mistake, or to deceive
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`ac