MEMORANDUM AND ORDER
Bеfore the court is the plaintiffs’ motion for class certification [# 197-1], For the reasons stated below, the motion is denied.
I. Background
The court assumes familiarity with the factual background of this case. Briefly, plaintiffs Vulcan Golf, LLC, John B. Sanfilippo & Son, Inc. (“JBSS”), Blitz Realty Group, Inc., and Vincent E. “Bo” Jackson, have filed a complaint styled as a class action lawsuit against the following defendants: Google, Inc., Oversee.net, Sedo LLC, Dotster, Inc. a/k/a revenuedirect.com, Internet Reit, Inc., d/b/a Ireit, Inc., and John Does I-X.
The plaintiffs allege that Google and the other defendants have engaged in a wide-ranging scheme whereby they receive “billions of dollars in ill-gotten advertising and marketing revenue” by knowingly and intentionally registering, licensing and monetizing purportedly deceptive domain names at the expense of the plaintiff-mark owners.
The court granted in part and denied in part the defendants’ prior two motions to dismiss and ordered briefing on the class certification issue. The plaintiffs seek class certification on only four of the remaining claims, including the Anti-Cybersquatting Protection Act (“ACPA”) claim, the contributory and vicariоus infringement claims, and the unjust enrichment claim. The plaintiffs’ original motion for class certification proposed the following class:
Any individual or owner of a mark whose personal name or mark is identical or confusingly similar to a parked domain name*524 that has been registered, trafficked in or used for commercial gain, by one or more of the Defendants, during the period of time January 1, 2002 through the present.
The plaintiffs contended that the class could be further subdivided into three proposed subclasses. However, after the defendants filed their consolidated motion in opposition to the plaintiffs’ proposed classes, the plaintiffs revised their proposed classes in their reply. Because it was not clear to the court what classes the plaintiffs were proposing, the court ordered the plaintiffs to file a statement clarifying what their proposed classes were. The plaintiffs filed their clarifying statement, in which they appear to propose the following class:
Any individual or owner of a mark whose personal name or mark is identical to or differs from a domain name parked and advertised on by one or more of the Defendants only by addition of a pre-pending “www” or “http” or post-pending “com.”
In addition, the plaintiffs propose three subclasses (as revised in their reply brief). The plaintiffs refer to the first subclass as the “doubly-registered subclass” and it is defined as follows:
Any owner of a mark appearing on the principal or secondary registry of the United States Patent and Trademark Office who has a registered domain name containing that mark (a “mark owner’s domain name”), and whose “mark owner’s domain name” differs from a domain name parked and advertised on by one or more of the Defendants only by addition of a pre-pend-ing “www” or “http” or post-pending “com.”
The other two proposed subclasses are defined as follows:
Any owner of an unregistered mark who has registered a domain name containing that mark (a “mark owner’s domain name”), and whose “mark owner’s domain name” differs from a domain name parked and advertised on by one or more of the Defendants only by addition of a pre-pend-ing “www” or “http” or post-pending “com.”
Any individual who has registered a domain name containing his or her personal name (a “personal domain name”), and whose “personal domain name” differs from a domain name parked and advertised on by one or more of the Defendants only by addition of a pre-pending “www” or “http” or post-pending “com.”
II. Analysis
A. Class Action Analysis
“In order to show that class certification is justified, [the plaintiffs] must satisfy the four requirements of Rule 23(a) of the Federal Rules of Civil Procedure.” Williams v. Chartwell Financial Services, Ltd.,
A class action may be maintained if Rule 23(a) is satisfied and if:
(1) prosecuting separate actions by or against individual class members wоuld create a risk of:
(A) inconsistent or varying adjudications with respect to individual class members that would establish incompatible standards of conduct for the party opposing the class; or
(B) adjudications with respect to individual class members that, as a practical matter, would be dispositive of the interests of the other members not parties to the individual adjudications or would substantially impair or impede their ability to protect their interests;
(2) the party opposing the class has acted or refused to act on grounds that apply generally to the class, so that final injunc-tive relief or corresponding declaratory re*525 lief is appropriate respecting the class as a whole; or
(3) the court finds that the questions of law or fact common to class members predominate over any questions affecting only individual members, and that a class action is superior to other available methods for fairly and efficiently adjudicating the controversy. The matters pertinent to these findings include:
(A) the class members’ interests in individually controlling the prosecution or defense of separate actions;
(B) the extent and nature of any litigation concerning the controversy already begun by or against class members;
(C) the desirability or undesirability of concentrating the litigation of the claims in the particular forum; and
(D) the likely difficulties in managing a class action.
“Courts have broad discretion in determining whether the class certification requirements of Rule 23 have been met.” Redmon v. Uncle Julio’s of Illinois, Inc.,
Prior to their arguments regarding the express elements of Rule 23, the parties engage in an extensive discussion about the defendants’ position that the class is unascertainable. “An implicit prerequisite to class certification is that a sufficiently definite class must exist.” Wallace v. Chicago Housing Authority,
1. Rule 23(a)
The defendants argue that the plaintiffs’ request for class certification fails under Rule 23(a). Specifically, they contend that the named plaintiffs are atypical of the class under Rule 23(a)(3) and inadequate class representatives for purposes of Rule 23(a)(4). Even though the defendants do not challenge numerosity and commonality, the court must still ascertain whether these requirements have been met. Fed.R.Civ.P. 23(c); Davis v. Hutchins,
a. Numerosity
Rule 23(a)(1) requires that a class be so numerous that joinder of all its members is impracticable. Fed.R.Civ.P. 23(a)(1). The defendants do not challenge this element of Rule 23(a) and given the parties’ apparent agreement that the class could number in the millions, the court concludes that the numer-osity requirement has been satisfied.
b. Commonality
“A common nucleus of operative fact is usually enough to satisfy the commonality requirement of Rule 23(a)(2).” Rosario v. Livaditis,
e. Typicality and Adequacy
The typicality element under Rule 23(a)(3) requires a determination “whether the named representatives’ claims have the same essential characteristics as the claims of the class at large.” De La Fuente v. Stokely-Van Camp, Inc.,
Rule 23(a)(4) requires that class representatives must “fairly and adequately protect the interests of the class.” Fed.R.Civ.P. 23(a)(4). In order to satisfy the requirements of Rule 23(a)(4), the class reprеsentative must “possess the same interest and suffer the same injury as the class members.” Uhl v. Thoroughbred Tech. & Tele-comms., Inc.,
Because the parties address these two factors together, the court will also.
As an initial matter, the defendants do not challenge the adequacy of plaintiffs’ counsel and the resumes attached to the plaintiffs’ motion for class certification indicate that plaintiffs’ counsel has significant experience in class action litigation.
The defendants assert that the named plaintiffs are atypical because intra-class conflicts exist. According to the defendants, because there are marks which are registered multiple times by different owners for different types of goods, intra-class conflicts would develop in order to establish who has rights to any damages awarded for any infringement by a parked domain name. For example, the defendants note that the mark “EARTH” is registered to Maynard Designs for vitamins, Niagara Conservation Corporation for shower heads, and the Escuela de Agricultura de la Region Tropical Húmeda for bananas. See Defendants’ Consolidated Opposition at 32-33. As a result, defendants argue, the class members would have disputes between themselves as to which of them has the right to recover for any use of the word “earth” in a domain name during the relevant period. In addition, the defendants contend that because one aspect of relief sought by the plaintiffs is that the allegedly deceptive domain names be transferred to the owners of the marks, the class members would also fight over who had the right to ownership of the infringing domain names.
However, as noted by the plaintiffs, none of the arguments raised by the defendants demonstrate that the named plaintiffs’ claims are atypical of those of the class members.
The defendants also assert that intra-class conflicts preclude certification under both the typicality and adequacy requirements because some class members have ongoing business relationships with Google, placing them at odds with other class members. The defendants note that numerous putative class members run ads through Google’s search engine and that many of them derive a significant amount of revenue from these ads. According to the defendants, the class members with the Google advertising relationship will want to limit any damages exposure to Google while the other class members will want to attain the highest amount of damages possible. Broussard v. Meineke Discount
However, the defendants fail to point out that such a conflict actually exists between the named plaintiffs in this ease and the other class members. The defendants state that “Vulcan Golf itsеlf has been a Google AdWords advertiser,” but is it now? There simply is no indication that the named plaintiffs in this case have an actual conflict with other putative class members.
The defendants finally contend that the named plaintiffs are not typical because some plaintiffs have different claims against some defendants. From what the court can make of this argument, it appears that the defendants are asserting that because no named plaintiff has a claim against Ireit or Sedo, a class could not be certified as to Ireit and Sedo. Rather than an argument on typicality or adequacy, this seems to be an argument that the named plaintiffs do not have standing as to Ireit or Sedo, and thus, the claims against them should be dismissed. The plaintiffs appear to concede that none of the named plaintiffs has a concrete claim against Ireit or Sedo when they state in their sur-response that they are “confident that, once discovery is permitted, examples of domains parked by Ireit and Sedo that fall within the ascertainment methodology will also be uncovered.” Plaintiffs’ Response to Sur-reply at 8. The cite to this statement refers the court back to the section in the plaintiffs’ motion for class certification on standing and the juridical link doctrine. To the extent that the parties attempt to bring in issues better addressed on a motion to dismiss, the court declines to rule on these issues at this time. The defendants may renew within 14 days of the date of entry of this order their motion to dismiss the claims against certain of the defendants based on lack of standing.
Having rejected the defendants’ arguments that the typicality and adequacy requirements have not been met, the court concludes that the elements of Rule 23(a) have been satisfied. The representatives’ claims arise from the same course of conduct as the other class members and the class representatives have the same interests and have suffered the same injury as the putative class members.
2. Rule 23(b)
a. Rule 23(b)(3)
i. Predomination of common questions of law or fact
Rule 23(b)(3) requires the court to assess whether (1) questions of law or fact common to class members predominate over any questions affecting only individual members and (2) whether the class action is superior to othеr available methods for fairly and efficiently adjudicating the controversy.
As noted by another court in this district:
In considering Rule 23(b)(3)’s requirements, the court must review the substantive elements of plaintiffs’ cause of action, the proof necessary for the various elements and the manageability of the trial on these issues. The court is obligated to determine whether the existence of individual issues preclude certification, and must take into account the substantive law, facts, procedural due process, and fundamental fairness. Where liability determinations are both individual and fact-intensive, class certification under Rule 23(b)(3) is improper.
Pastor v. State Farm Mut. Auto. Ins. Co., 05 C 1459,
In order to state a claim under the ACPA, a plaintiff must allege that “(1) it had a distinctive or famous mark at the time the domain name was registered, (2) the defendant registered, trafficked in, or used a do
(A). Infringement Claims
The defendants contend that individual issues associated with the infringement claims preclude class certification.
I. Ownership
First, the defendants argue that membership in the Modified Original Class requires that the potential class member own the mark or personal name, which could lead to potentially thousands of individual merits hearings and rulings. The plaintiffs respond that ownership is “easily determined” through the Trademark Electronic Search System (“TESS”) of the United States Patent and Trademark Office. They further state that while issues of ownership are certainly “relevant” they can be dealt with after the class has been certified.
Even assuming, however, that the list of putative class plaintiffs can be initially ascertained through the rolls of the Patent and Trademark Office, the plaintiffs ignore the possibility of multiple time-consuming inquiries regarding ownership. Even if the court has to conduct hearings regarding ownership on even a tiny fraction of the potentially millions of registered and unregistered marks or personal names of the putative class members, such an undertaking would render proceeding as a class unmanageable.
II. Distinctiveness
The defendants next point out that litigating the distinctiveness of each trademark or personal name, as required for ACPA protection, would entail discovery from each class member and separate rulings for each mark or name. The plaintiffs respond that, as to the “doubly registered subclass” at least, the court can presume distinctiveness with respect to the marks registered on the Patent and Trademark Office’s Principal Register. 15 U.S.C. § 1115(a).
But, the presumption of distinctiveness based on registration is “easily rebuttable” and “merely shifts the burden of production to the alleged infringer.” Custom Vehicles, Inc. v. Forest River, Inc.,
The presumption of validity that federal registration confers (see 15 U.S.C. § 1115(a)) evaporates as soon as evidence of invalidity is presented. Its only function is to incite such evidence, and when the function has been performed the presumption drops out of the case.
Door Systems, Inc. v. Pro-Line Door Systems, Inc.,
Moreover, the defendants note that marks registered on the Supplemental Register are not presumed distinctive. 15 U.S.C. § 1091(a); 4A Callmann On Unfair Comp., Tr. & Mono. § 26:13 (4th Ed.)(“Registration on the Supplemental Register means that the mark is admittedly too defective to qualify for the Principal Register, at least without a showing of secondary meaning” and “may constitute an admission that any distinctiveness is not inherent.”); see also McCarthy on Trademarks § 19:36 (2007)(a mark’s “very presence on the Supplemental Register indicates a preliminary determination that the mark is not distinctive”). Accordingly, registration alone, on either the Principal or Supplemental Register, does not support a finding that distinctiveness can be handled on a class-wide basis.
Robinson, however, is using numerous variants of the KeraCare marks to lure customers to his website. He has also conceded that people searching on the Internet for the word “KeraCare” would be only looking for Avlon’s KeraCare products. As the saying goes, actions speak louder than words. If the marks were indeed unfamiliar to the vast majority of shoppers, Robinson would not have registered at least fifteen variants of the word KeraCare as domain names in connection with his website.
Avlon Industries v. Robinson, No. 01 C 3615,
The court notes, however, that the Avion ease was decided on summary judgment after the court was presented with extensive evidence regarding the KeraCare mark and the actions of specific groups of consumers in connection with that mark. It in no way stands for a general proposition that distinctiveness can simply be presumed for any mark as to which numerous domain name variants have been registered. Moreover, as the defendants point out, what about marks that do not have “numerous” variant domain names, but only one or two? Should the court extend the presumption of distinctiveness to those marks?
Not only is such a presumption unworkable, such a class-wide presumption is in direct contravention of established law. Caselaw on the issue of distinctiveness indicаtes that it is a multi-faceted, fact-specific inquiry particular to each putative mark, which includes a detailed inquiry into whether a mark is generic, descriptive, suggestive, arbitrary, or fanciful. Mil-Mar Shoe Co. v. Shonac Corp., 75 F.3d 1153, 1156 (7th Cir. 1996) (citations omitted). The category of the mark generally corresponds to the level of protection it receives. Id. “[Gjeneric terms receive no trademark protection; descriptive marks are protected only if the mark has achieved ‘secondary meaning’ in the relevant community; and suggestive, arbitrary, and fanciful marks are deemed inherently distinctive, and thus entitled to full protection.” Id. (citations omitted).
The Seventh Circuit has expressly warned against placing undue reliance on labels associated with trademark law at the expense of a thorough analysis:
The parties’ reaction to the foregoing principles is representative of a decided tendency in trademark eases to argue about the legal labels rather than the underlying analytical inquiries those labels are designed to trigger. The labels themselves are merely springboards for analysis, not a substitute for it. The point is a basic one, but bears repeating, for it is all too often forgotten when the law is reduced to a few conelusory classifications: such abstract categories are analytical touchstones for a much more sophisticated inquiry.
Walt-West Enterprises, Inc. v. Gannett Co., Inc.,
Thus, the court rejects the plaintiffs’ position that distinctiveness can be presumed on a class-wide basis for the “doubly-registered subclass.” Instead, were the class to be certified, the court would be required to engage in thousands (or more) of individual inquiries as to whether a class members’ mark is distinctive.
As to the subclasses other than the “doubly-registered subclass” (i.e., unregistered marks and personal names), the plaintiffs
The “rule” that personal names are not protected as trademarks until they acquire secondary meaning is a generalization, and its application is to be guided by the purposes that we have extracted from the case law. When none of the purposes that animate the “personal name” rule is present, and application of the “rule” would impede rather than promote competition and consumer welfare, an exception should be recognized.
Peaceable Planet, Inc. v. Ty, Inc.,
The plaintiffs’ reliance on the language of the ACPA does not affect this conclusion. Apparently in an effort to demonstratе that all personal names are automatically deemed to be marks, the plaintiffs quote part of the statute, which states that “a personal name ... is protected as a mark under this section.” See 15 U.S.C. § 1125(d)(1)(A). But, as indicated by the ellipsis, the plaintiffs’ quote leaves out the word “which”. The language of the statute states that the ACPA provides for “a civil action of a mark, including a personal name which is protected as a mark.” Id. (emphasis added).
Thus, as with the registered marks, the individual analyses required to analyze distinctiveness for unregistered marks and personal names for the proposed classes are staggering and militate against class certification.
III. Affirmative Defenses
The defendants also assert that the plaintiffs’ request for class certification should fail because individual factual issues predominate as to the defendants’ affirmative defenses. These defenses include that: (1) the marks were obtained fraudulently; (2) the marks have been abandoned; (3) the marks are being used to misrepresent the source of goods or services, and (4) the defendant is making fair use of the marks. See 15 U.S.C. § 1115(b)(l)~(4).
The plaintiffs respond that the existence of individual affirmative defenses does not require denial of class certification, citing several cases. See, e.g., Dunn v. City of Chicago,
As an initial matter, several of these district court cases refer to counterclaims, not affirmative defenses. These district courts have concluded that counterclaims do not bar class certification based on language from a Seventh Circuit opinion, Haynes v. Logan Furniture Mart,
Moreover, to the extent that the eases deal with affirmative defenses, the court does not read these cases as precedential authority that the existence of individual affirmative defenses cannot, as a matter of law, be considered in analyzing whether a class should be certified. They merely stand for the proposition that the existence of such affirmative defenses does not automatically preclude class certification, a conclusion with which this court agrees.
The existence of affirmative defenses
Ultimately, the affirmative defenses related to the putative class members’ marks simply add another layer to an already fact-specific inquiry that the court must delve into with respect the putative class members’ marks or names. In their response to the sur-reply, the plaintiffs assert that the court can “postpone litigation on those affirmative defenses until after the common liability issues have been resolved.” Plaintiffs’ Response to Sur-reply, Dkt. # 234 at 7 (citing Merk,
(B). Unjust Enrichment Claim
The plaintiffs’ claim of unjust enrichment is made pursuant to state law, which, in this multi-state class action, may vary. The plaintiffs assert that the application of California law to all of the putative class plaintiffs’ unjust enrichment claims is proper under Illinois’ relevant choice-of-law rule. In re Bridgestone/Firestone, Inc.,
For tort actions6 , Illinois instructs the court to ascertain the forum with the “most significant relationship” to the case. “Under this test, the law of the place of injury controls unless Illinois has a more significant relationship with the occurrence*532 and with the parties.” Four factors are supposed to guide the court’s decision: “(1) where the injury occurred; (2) where the injury-causing conduct occurred; (3) the domicile of the parties; and (4) where the relationship of the parties is centered.” The court evaluates these factors “in light of the policies underlying the laws of those jurisdictions.”
Tanner v. Jupiter Realty Corp.,
According to the plaintiffs, California law would apply under this analysis because the “creator, facilitator and implementer of the Deceptive Domain Scheme, Google, is headquartered in California.” The plaintiffs also point to the fact that Oversee, another defendant, is headquartered in California. But that is as far as the plaintiffs’ analysis goes. As the defendants point out, Sedo is headquartered in Massachusetts, Dotster in Washington, and Ireit in Texas.
Moreover, as noted above, “the law of the place of injury controls unless Illinois has a more significant relationship with the occurrence or the parties.” Id. The plaintiffs do not mention the place of the injury or engage in any type of analysis on the complex determination of where an injury occurs which is based on the click of a mouse. As the defendants note, however, it is highly unlikely that it would be appropriate to conclude that California has the most significant contacts to an unjust enrichment claim brought by a Washington trademark owner against Washington-based Dotster. Moreover, while the plaintiffs rely heavily on their assertion that Google “designed and hatched” the scheme in California, it was allegedly effectuated in all 50 states, further weakening the plaintiffs’ assertion that California law applies across the board. Clay v. American Tobacco Co.,
However, even assuming that application of California unjust enrichment law were proper under Illinois’ most significant contacts test, the plaintiffs would still have to show that California’s unjust enrichment law does not conflict with the unjust enrichment laws of the other states. Specifically, the Supreme Court has noted that while a court’s choice of one state’s law in a multi-state class action cannot be “arbitrary or unfair,” it has further stated “[t]here can be no injury in applying [one state’s] law if it is not in сonflict with that of any other jurisdiction connected to th[e] suit.” Phillips Petroleum Co. v. Shutts,
In an alternative argument, the plaintiffs contend that even if all of the 50 states’ unjust enrichment laws apply, there are no significant differences among those laws that would require denial of class certification. Uniformity is important as the Seventh Circuit has noted that “[n]o class action is proper unless all litigants are governed by the same legal rules. Otherwise the class cannot satisfy the commonality and superiority requirements of Fed.R.Civ.P. 23(a), (b)(3).” In re Bridgestone/Firestone, Inc.,
The plaintiffs attach to their reply brief an exhibit purporting to show that unjust enrichment laws are essentially the same across the 50 states. See Plaintiffs’ Reply at Exhibit 2. While providing excerpts of the elements of the 50 states’ unjust enrichment claims as proof of their similarity, the plaintiffs notably fail to discuss the states’ laws in detail or address the concerns raised by numerous other courts that have found significant differences in the laws. Siegel v. Shell Oil Co., No. 06 C 0035,
The court finds no basis on which to differ from the well-supported and detailed analy-ses of other district courts on this exact issue. Nor is the court persuaded by the plaintiffs’ citation to one particular sentence in Powers v. Lycoming Engines,
Even though the legal elements of an unjust enrichment cause of action are essentially similar among the states, there are differences in how they are applied and interpreted. A significant difference is that most states, including Pennsylvania, preclude recovery on an unjust enrichment theory if an express contract governs the relationship between the parties. Among those states, at least five have carved out exceptions to this general rule, allowing recovery on an unjust enrichment claim despite an express contract.
Not only are there variations among the states’ laws regarding the legal elements and potential defenses, there are also differences as to who may bring an unjust enrichment claim. Three jurisdictions preclude indirect purchasers from asserting claims for unjust enrichment unless they have conferred a benefit directly on the defendant.
In contrast, nine other states have explicitly determined that an indirect benefit is enough.
Id. at 231-32 (citations and footnotes omitted). Indeed, the plaintiffs’ contention that the Powers ease stands for the proposition that the differences between the states’ unjust enrichment laws is minor is belied by two statements in the decision noting that application of Pennsylvania unjust enrichment law would result in a “real conflict” with other states’ laws. Id. at 232-33.
Finally, the court acknowledges that in In re Abbott Laboratories Norvir Anti-Trust Litigation, Nos. C 04-1511 CW, C 04-4203 CW,
Accordingly, because individual issues predominate, the class cannot be certified under Rule 23(b)(3) with respect to the unjust enrichment claim.
ii. Superiority
The second question the court must answer with respect to Rule 23(b)(3) is whether a class action is superior to other methods of resolving the remaining putative class members’ claims. The court concludes that the answer is no.
As discussed in detail above, individual issues predominate as to the trademark-related claims and the certification of any class related to the trademark claims would simply be unmanageable. See Eisen v. Carlisle and Jacquelin,
Moreover, a class action is not the only potential way to address claims brought by putative class members. Specifically, as noted by the defendants, other mechanisms exist by which the putative class plaintiffs could obtain relief. For instance, the Uniform Domain-Name Dispute Resolution Policy requires domain name registrants to submit to administrative proceedings in the event of a complaint by a third-party, and provides in relevant part:
a. Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or cоnfusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(in) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.
Section 4a., Mandatory Administrative Proceeding, Uniform Domain Name Dispute Resolution Policy, as approved by the Internet Corporation for Assigned Names and Numbers (“ICANN”) on October 24, 1999. http://www.icann.org/en/dndr/udrp/policy.htm (last visited November 7, 2008). The plaintiffs assert that money damages are not available in a UDRP proceeding. See id. at Section 4(i)(“The remedies available to a complainant pursuant to any proceeding before an Administrative Panel shall be limited to requiring the cancellation of your domain name or the transfer of your domain name registration to the complainant.”). However, as noted by the defendants, a claim made under the UDRP procedure takes on average 50 days to resolve. Thus, to the extent that a mark owner simрly wants to stop improper usage by the domain name registrant and is not seeking money damages, the UDRP proceedings are certainly a faster and less expensive route than litigation, whether in a class or individually.
In addition, putative class members who want money damages may sue individually for those as the ACPA allows for statutory damages of up to $100,000. See 15 U.S.C. § 1117(d). Thus, to the extent that the plaintiffs assert that a class action is the only meaningful way to recover, the significant money damages available to individual claimants belies such a claim. Andrews,
The plaintiffs’ citation to Murray v. GMAC Mortgage Corp,
Finally, the court also notes that the plaintiffs seek to resolve relatively novel legal theories in one case with one throw of the dice as to potentially hundreds of thousands of claims. The Seventh Circuit has voiced concerns with this approach. Thorogood v. Sears, Roebuck and Co.,
For these reasons, the court finds that a class action is not the superior means for adjudicating the putative class members’ trademark-related claims.
b. 23(b)(2)
As an alternative to Rule 23(b)(3) certification, the plaintiffs also seek to have the class certified under Rule 23(b)(2), which requires that “the party opposing the class has acted or refused to act on grounds that apply generally to the class, so that final injunctive relief or corresponding declaratory relief is appropriate respecting the class as a whole.”
“Rule 23(b)(2) operates under the presumption that the interests of the class members are cohesive and homogeneous such that the case will not depend on adjudication of facts particular to any subset of the class nor require a remedy that differentiates materially among class members.” Lemon v. International Union of Operating Engineers, Local No. 139, AFL-CIO,
Moreover, in order for Rule 23(b)(2) to be relied upon, any monetary relief must only be incidental to the injunctive relief sought. Id. at 581 (citation omitted). In other words, Rule 23(b)(2) requires that injunctive relief be the “predominate” relief sought. Id. at 580-81. The plaintiffs’ assertion that their primary claim is injunctive versus monetary is belied by an argument in their response to the motion to dismiss.
The plaintiffs contend that “incidental” (in that monetary relief must only be incidental to the injunctive relief sought) only means mechanical or “without the need for individual calculation,” but they have failed to demonstrate that such a mechanical calculation can be made.
Finally, as the defendants note, the requested relief, an injunction barring the use of “any domain name that incorporates, in whole or in part,” any putative class member’s name or mark would be overbroad. Simply because a domain name may include a particular mark does not mean that the domain name violates the trademark laws. See, e.g., Trans Union LLC v. Credit Research, Inc.,
Based on all of the above, the court concludes that class certificatiоn under Rule 23(b)(2) is not appropriate.
c. Rule 23(b)(1)(A)
The plaintiffs also, in the alternative, seek certification under Rule 23(b)(1). Prior to addressing the substance of the request, the court notes two concerns it had with this section of the plaintiffs’ briefs. First, the court remarks at the outset that the plaintiffs’ position with respect to certification under this section is cursory and confusing. The section heading in the plaintiffs opening brief states that “[t]he Class also satisfies the Requirements of Rule 23(b)(1).” But Rule 23(b)(1) has two independent subsections (A) and (B), and the text of the plaintiffs’ opening motion substantively discusses only subsection (A). However, the plaintiffs conclude the section by generally stating that “[a] Rule 23(b)(1) class is clearly appropriate here.” Motion for Class Certification at 30, Dkt. # 197. Because the plaintiffs discuss only Rule 23(b)(1)(A), this is the only subsection the court will address.
Second, the court notes that in order to avoid the defendants’ argument that certification of a class under Rule 23(b)(1)(A) is inappropriate in a case where the plaintiffs seek money damages, the plaintiffs, in their reply, contend that any relief under a Rule 23(b)(1) certification order would be limited to injunctive relief. Plaintiffs’ Reply at 22. Again, the court is confused—do the plaintiffs want monetary damages or not? In one section of the brief the plaintiffs ask for damages and state that a UDRP proceeding that would provide only injunctive relief is insufficient. However, in this section, they contend that they are seeking only injunctive relief. The court is extremely troubled by the fact that the plaintiffs’ requests for relief seem to change based on exigencies of the legal argument at hand. Nevertheless, the court will address the plaintiffs’ argument under this section to the extent possible given the inconsistencies.
Having dealt with the two matters of concern, the court now turns to the substance of plaintiffs’ request for certification under Rule 23(b)(1)(A). Rule 23(b)(1)(A) requires that class certification is appropriate if the requirements of Rule 23(a) have been met and “prosecuting separate actions by or
But as discussed in detail above, the class members cannot be treated alike because of the requisite individual inquiries regarding ownership, distinctiveness and the effect of the affirmative defenses that are inherent in a trademark-related action. Indeed, contrary to the “risk” of inconsistent or incompatible adjudications, it is certain that thousands of individual trademark cases would produce varying results because the analysis is specific to the marks and domain names at issue and the facts of each particular case. Such different results do not implicate Rule 23(b)(1)(A) in this case because they would not establish incompatible standards of conduct for the defendants as required by the language of Rule 23(b)(1)(A). In other words, different results do not “trap [a defendant] in the inescapable legal quagmire of not being able to comply with one such judgment without violating the terms of another.” Walker v. Houston,
Further, to the extent that the plaintiffs are only seeking injunctive relief, it appears that class certification, if it were to be allowed, would proceed under Rule 23(b)(2). But, as discussed above, the court has already denied class certification under that section.
III. Conclusion
The plaintiffs point out that the court in In re Napster, Inc. Copyright Litigation, No. C MDL-00-1369 MHP, C 04-1671 MHP
However, this court must determine in its own discretion whether the particular facts of this case satisfy the requirements of Rule 23(b)(3), especially with respect to the likely difficulties of managing a class action of this scale with the possibility of lengthy discovery and numerous hearings focused on a multitude of individual issues. In this court’s view, the possibility of hundreds if not thousands of individual hearings related to ownership, distinctiveness and the applicability of affirmative defenses, including managing probable discovery to be conducted prior to those hearings, precludes a finding that a class action is a superior method of adjudicating the trademark-related claims, as required by Rule 23(b)(3).
Indeed, it is difficult for this court to comprehend any circumstances by which the plaintiffs could properly obtain class certification of their trademark-related claims. Moreover, the lack of uniformity with respect to the 50 states’ laws precludes certification of any class as to the state lаw unjust enrichment claim.
Nor, as described above, is certification appropriate under Rule 23(b)(2) or 23(b)(1)(A).
Accordingly, the court denies the plaintiffs’ motion for class certification [# 197-1].
Notes
. While the concern regarding multiple mark owners competing over their entitlement to damages or domain name ownership does not support a finding of atypicality, it is an additional reason that the class should not be certified under Rule 23(b)(3) given the individual issues that would need to be resolved. Indeed, the plaintiffs respond to this argument by stating that "[i]f Defendants have injured more than one party with a particular Deceptive Domain, the proper course is to allocate the damages between and among the injured parties at the damages allocation stage—not to deny class certification.” Plaintiffs' Reply at 23, Dkt. # 217.
. The court notes that the parties discuss only briefly the contributory and vicarious infringement claims in the context of the instant motion. Nevertheless, because these two claims are derivative of a trademark infringement claim, which would require individual inquiries based on, among other things, ownеrship, distinctiveness and the applicability of affirmative defenses, as discussed herein, the court's analysis of the ACPA claim under Rule 23(b) applies equally to the contributory and vicarious infringement claims.
. To the extent that the plaintiffs assert that there is no indication that the defendants will challenge the presumption of distinctiveness, this is
. The plaintiffs also cite to Portis v. City of Chicago, 02 C 3139,
. The plaintiffs' reference to "hypothetical” affirmative defenses in their response to the consolidated sur-reply, Dkt. # 234 at 6, is puzzling given that the defendants’ answers, which are on file, include affirmative defenses which the plaintiffs have not moved to strike.
. Because the plaintiffs unjust enrichment count is based on "deception, misconduct, and material misrepresentations,” See Plaintiffs' Reply at 14 (Dkt.# 217), a tort choice of law analysis applies.