Parts.Com, LLC v. Yahoo! Inc.
996 F. Supp. 2d 933
S.D. Cal.2013Background
- Plaintiff Parts.com operates an online automotive-parts retail site and owns a federal registration for the mark PARTS.COM; it alleges use of the mark since at least 2002.
- Defendant Yahoo sells keyword-triggered sponsored links that appear alongside organic search results; a search for "parts.com" on Yahoo produced multiple links, two or three of which displayed "parts.com" in the link text.
- Parts.com asserts six claims against Yahoo: (1) federal trademark infringement (Lanham Act), (2) false designation of origin (Lanham Act § 43(a)), (3) state trademark infringement, (4) state unfair/deceptive trade practices, (5) federal trademark dilution, and (6) state dilution/business-reputation injury.
- Yahoo moved to dismiss under Rule 12(b)(6), arguing Parts.com’s pleadings are conclusory and insufficient, that Yahoo is not an information content provider (so CDA § 230 bars state-law claims), and that Parts.com’s mark is not sufficiently "famous" for dilution.
- The Court denied dismissal of the federal infringement claim (claim 1), finding the registration and Exhibit C allegations plausibly alleged likelihood of confusion. The Court granted dismissal of: claim 2 (false designation) without prejudice; claims 3, 4, and 6 (state-law claims) with prejudice under CDA § 230; and claim 5 (federal dilution) without prejudice for failure to plead fame.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| 1. Federal trademark infringement (likelihood of confusion) | Parts.com alleges ownership (federally registered mark) and that Yahoo’s keyword/sponsored-link display causes consumer confusion | Yahoo contends complaint is conclusory and Exhibit C does not show sponsored links bearing PARTS.COM; cites Network Automation regarding consumer sophistication | Denied. Registration establishes ownership; pleadings and Exhibit C sufficiently allege likelihood of confusion to survive dismissal (fact question) |
| 2. False designation of origin under Lanham Act § 43(a) | Yahoo’s display of PARTS.COM as keyword/sponsored links suggests affiliation or sponsorship and thus false designation | Yahoo argues it is not the producer of goods; displaying links does not misrepresent Yahoo as the origin | Granted. Dismissed without prejudice — Yahoo’s role as search engine/provider of links does not make it the producer of Parts.com goods (Dastar/Jurin analogies) |
| 3. State-law claims (trademark infringement; unfair/deceptive trade practices; dilution/injury) | Parts.com alleges state-law equivalents of federal claims based on same conduct | Yahoo invokes CDA § 230 immunity as an interactive computer service, contending it did not create ad content | Granted. Dismissed with prejudice — § 230 bars these state-law claims because liability would be premised on third-party content Yahoo displayed |
| 4. Federal trademark dilution | Parts.com alleges PARTS.COM is famous and Yahoo’s use dilutes the mark | Yahoo argues Part s.com is not "famous" under § 1125(c) and pleadings lack non-conclusory facts on fame | Granted. Dismissed without prejudice — plaintiff failed to plead fame (multiple statutory fame factors inadequately alleged) |
Key Cases Cited
- Ashcroft v. Iqbal, 556 U.S. 662 (pleading standard: plausibility required)
- Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (pleading requires more than labels and conclusions)
- Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137 (9th Cir.) (keyword use is "use in commerce"; discussion of Internet context for likelihood-of-confusion factors)
- Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352 (9th Cir.) (likelihood-of-confusion is fact-intensive)
- Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (origin of goods means producer of tangible product)
- Jurin v. Google Inc., 695 F. Supp. 2d 1117 (E.D. Cal.) (search-engine keyword sales do not constitute false designation of origin; § 230/CDA discussion analogue)
- Perfect 10, Inc. v. CCBill LLC, 488 F.3d 1102 (9th Cir.) (CDA § 230 broadly bars state-law IP claims against interactive computer services)
- DeSoto v. Yellow Freight Sys., Inc., 957 F.2d 655 (9th Cir.) (leave to amend standard; futility exception)
- Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628 (9th Cir.) (elements of federal dilution claim)