The opinion of the court was delivered by: Thomas J. McAVOY Senior United States District Judge
Plaintiff commenced the instant action alleging various violations of the Lanham Act, 15 U.S.C. ch. 22. Presently before the Court is Defendant's motion to dismiss the Complaint pursuant to FED. R. CIV. P. 12 and for sanctions pursuant to FED. R. CIV. P. 11.
According to the Complaint, Plaintiff is the holder of the registered trademark "THE DATING RING." Plaintiff contends that he has continually used the mark in commerce since 2000 and was granted a trademark in March 2001. Compl. at ¶ 6. Plaintiff states that The Dating Ring has been extensively and continually advertised and promoted by Plaintiff through his website and via e-mail, phone sales, mailing, personal solicitations and news media articles. Id. at ¶ 9.
In February 2004, Plaintiff informed Defendant that he received over 500 results when he typed the keywords "dating ring" and their derivatives in the search function on Defendant's website, www.Zales.com. Defendant responded that the results appeared because their website generated results based on a search of the word "ring" only. Id. at ¶ 7. Plaintiff contends that Defendant has violated his trademark by causing results to appear on its website when a search is performed on the phrase "dating ring". It is further alleged that Defendant violated the trademark by purchasing the keywords "dating ring" for purposes of advertising with Google, Yahoo, and other companies that operate Internet search engines. Id. at ¶ 12.
On a Rule 12 motion to dismiss, the Court must construe the Complaint in favor of Plaintiff and may dismiss the Complaint "only if 'it appears beyond doubt that the plaintiff can prove no set of facts in support of his claim which would entitle him to relief.'" Fernandez v. Chertoff, 471 F.3d 45, 51 (2d Cir. 2006) (quoting Conley v. Gibson, 355 U.S. 41, 45-46, 78 S.Ct. 99, 2 L.Ed.2d 80 (1957)).
During the pleadings stage in litigation, "[t]he appropriate inquiry is not whether a plaintiff is likely to prevail, but whether he is entitled to offer evidence to support his claims." Nechis v. Oxford Health Plans, Inc., 421 F.3d 96, 100 (2d Cir. 2005) (citations omitted). Thus, we assume the truth of all well-pleaded factual allegations and draw all reasonable inferences in favor of the plaintiff, id. - a rule that "'applies with particular force where the . . . the complaint is submitted pro se.'" Thompson v. Carter, 284 F.3d 411, 416 (2d Cir. 2002) (quoting Chance v. Armstrong, 143 F.3d 698, 701 (2d Cir. 1998)).
Fernandez, 471 F.3d at 51.
In reviewing the pending motion to dismiss, the Court has disregarded all materials submitted by Defendant outside of the pleadings. See Amaker v. Weiner, 179 F.3d 48, 50-51 (2d Cir. 1999).
a. Trademark Infringement
Defendant first moves to dismiss the trademark infringement claims on the ground that Plaintiff fails to allege a legally sufficient trademark use by Defendant. Defendant claims the Complaint should be dismissed because it never placed Plaintiff's trademark on any of its products, it never used the words "dating ring" on its website or elsewhere, and, accepting Plaintiff's allegations on the Complaint as true, any use of the words "dating ring" on its website were used internally only and, therefore, are not actionable under the Lanham Act.
To prevail on a trademark infringement claim for a registered trademark, Plaintiff must establish that: (1) he has a valid mark that is entitled to protection under the Lanham Act; and that (2) Defendant used the mark; (3) in commerce; (4) in connection with the sale or advertising of goods or services; (5) without Plaintiff's consent. 1-800 Contacts, Inc. v. Whenu.com, Inc., 414 F.3d 400, 406 (2d Cir. 2005); 15 U.S.C. § 1114(1)(a). Plaintiff also must demonstrate that Defendant's use of the mark is likely to cause confusion as to the affiliation, connection, or ...