Full opinion text
Memorandum, Decision and Order NEAL P. MCCURN, Senior District Judge. I. Introduction Presently before the court in this trademark infringement action are cross motions for summary judgment by plaintiffs Audi AG (“Audi”) and Volkswagen of America, Inc. (‘Volkswagen”) (collectively “Plaintiffs”) and by defendants Shokan Coachworks, Inc. (“Shokan”) and John H. Smith (“Smith”) (collectively “Defendants”). Oral argument was heard regarding these motions in Syracuse, New York on January 8, 2008. Decision was reserved. II. Procedural Background Plaintiffs commenced this action over four years ago in the United States District Court for the Eastern District of Michigan. Plaintiffs’ complaint (“the Complaint”) sets forth five various causes of action surrounding Defendants’ alleged improper use of certain of Plaintiffs’ registered trademarks, including the name AUDI® as well as the AUDI RING LOGO® (“the Audi Marks”). Plaintiffs’ claims in this action are (1) trademark and trade dress dilution in violation of Section 43 of the Lanham Act, 15 U.S.C. § 1125(c); (2) federal trademark infringement in violation of Section 32 of the Lanham Act, 15 U.S.C. § 1114; (3) false designation of origin or sponsorship, false advertising and trade dress infringement in violation of Section 43 of the Lanham Act, 15 U.S.C. § 1125(a); (4) cyberpiracy; and (5) common law trademark infringement. In February 2007, United States District Judge Victoria Roberts granted the Defendants’ motion to transfer the case to this district. Defendant Smith thereafter filed a motion seeking dismissal of all claims against him pursuant to Fed. R.Civ.P. 8(a) and 12(b)(6). Said motion was heard by this court and denied from the bench in June 2007. Shortly thereafter, Plaintiffs filed a motion before Magistrate Judge David R. Homer to amend their complaint to assert an additional claim for rescission of a settlement agreement. Said settlement agreement resolved a similar action brought by Plaintiffs against Shokan in this court in 1990. While the motion to amend was pending, Defendants filed a motion to compel Plaintiffs to produce certain documents concerning third-party uses of Plaintiffs’ trademarks. On August 31, 2007, Judge Homer held a telephone conference, at which he, after hearing argument from counsel, denied in part and granted in part Defendants’ motion to compel. On September 4, 2007, Judge Homer reduced his Order to writing, therein directing Plaintiffs to provide Defendants with all coexistence agreements as well as complaints filed in enforcement actions against part suppliers and service stations for the period January 1, 2000 to date. See Dkt. No. 85. Defendants timely filed objections to Judge Homer’s Order. Shortly thereafter, the present motions for summary judgment were filed. At the hearing of oral argument on those motions, the court overruled from the bench Defendants’ objections to Judge Homer’s September 4, 2007 Order. Also around that time, Judge Homer denied Plaintiffs’ motion to amend the complaint to add a claim for rescission, to which objections were never filed. Now remaining for resolution are the cross motions for summary judgment. Plaintiffs seek judgment in their favor, solely regarding liability, as to all of their claims pursuant to Fed.R.Civ.P. 56, as well as a permanent injunction against Defendants. See Dkt. No. 95. Defendants seek judgment dismissing all of Plaintiffs’ claims as well as judgment in their favor on their breach of contract counter-claim, also pursuant to Fed.R.Civ.P. 56. See Dkt. No. 96. III. Factual Background Plaintiff Audi is a German corporation that sells its vehicles, parts, services and other products throughout the world. See Decl. of Linda Scipione, Oct. 31, 2007, ¶ 8, Dkt. No. 95-37. Plaintiff Volkswagen is an American corporation, which is the exclusive licensee for the sale of Audi vehicles, parts, services and products in the United States. See id., ¶ 2. Defendant Shokan is a New York Corporation whose only facility is located in West Shokan, New York. See Decl. of John H. Smith, Oct. 31, 2007, ¶ 8, Dkt. No. 97-1. Defendant Smith is the President and sole owner of defendant Shokan. See id. ¶ 1.; Dep. of John H. Smith, Sept. 25, 2007, 25:17-22, at Ex. Y to Decl. Of John D. Cook, Oct. 31, 2007, Dkt. No. 95. Shokan is an Audi vehicle recycling facility, which has been in operation for over twenty five years, and only sells parts for Audi vehicles. See id. ¶¶ 3 and 4. Audi obtained a trademark registration for the word, Audi (“AUDI®”) from the United States Patent and Trademark Office (“USPTO”) on December 13, 1960. See Scipione Decl. ¶ 4; Ex. A to Cook Decl. Audi also obtained a trademark registration for its Audi Ring Logo, which consists of four horizontal, intertwined rings (“AUDI RING LOGO®”) on January 26, 1971. See id., ¶ 5; Ex. B to Cook Decl. In 1990, Plaintiffs commenced a trademark infringement action in this court against defendant Shokan, wherein Plaintiffs alleged Shokan infringed Audi’s FOOTBALL LOGO trademark (“FOOTBALL LOGO®”) as well as its AUDI® mark on letterhead, business cards and advertisements. See Ex. M to Cook Deck; Ex. 8 to Smith Deck The lawsuit was resolved by execution of a settlement agreement (“the Settlement Agreement” or “the Agreement”) in July 1991. The Agreement states, in relevant part, that Shokan is currently using a logo comprised of the word “Shokan” enclosed in a rust-colored oval with an outside ring which are nearly identical in shape and color to the Audi Football [Logo] (the “Shokan Logo”). In the Shokan Logo, the word “Shokan” is written in a nearly identical typeface and color as the word “Audi” in the Audi Football [Logo]. In addition, the word “Audi” appears in close proximity to the Shokan Logo on Shokan’s letterhead, business cards and advertisements. Ex. O to Cook Deck; Ex. 2 to Smith Deck In order to settle the lawsuit, Shokan agreed to stop using the Shokan Logo and agreed that “Shokan, its employees, successors and assigns will not infringe Audi AG’s tradenames, trademarks or service marks, including the word ‘Audi’, Audi Football or Audi Four-Ring design[.]” Id. at ¶¶ 1, 3. Paragraphs four and five of the Agreement state in whole as follows: Shokan agrees not to use the word “Audi”, except that the word “Audi” may be used by Shokan as an adjective to describe the availability of parts or repair services for Audi vehicles, provided that the language preceding and following such word be in characters equal and identical in size, type, color, illumination, mounting, spacing, decoration, material and format; and that such use not be as part of a trade or corporate name; and that the phrase “Audi Service”, “Audi Repair”, “Audi Sales”, “Audi Specialist”, and “Audi Parts” shall not be used unless it is clear from the context, or by an express disclaimer, that Shokan is not affiliated with Audi AG or [Volkswagen]. Audi AG and [Volkswagen] agree that Shokan’s new logo, in which “Shokan” appears in a green shape with rectangular sides and an arced top and bottom, and the advertisement attached as Exhibit A, meet the requirements of paragraphs 3 and 4, and shall not be challenged as infringing upon Audi AG’s trademarks or trade dress. Id., ¶¶ 4, 5. Exhibit A to the Agreement is an advertisement, which includes the new logo, and includes language in capital letters such as “AUDI USED PARTS”, and “800-ALL-AUDI”. See id. On November 15, 1991, the Honorable Howard G. Munson dismissed the 1990 lawsuit “without prejudice.” Audi Aktiengesellschaft, et al. v. Shokan Coachworks, 90-cv-01172 (N.D.N.Y.), Dkt. No. 6. Specifically, Judge Munson ordered that “[t]he court retains complete jurisdiction to vacate this Order and to reopen the action upon cause shown that settlement has not been completed and further litigation is necessary.” Id. Over a decade later, on May 13, 2003, Plaintiffs notified Defendants of certain of their alleged infringing uses of Plaintiffs’ trademarks and demanded that Defendants cease and desist from those uses, which include registering the 800allau-di.com domain name and displaying Plaintiffs’ trademarks on the website to which the domain name refers. See Ex. V to Cook Decl. On October 20, 2003, Plaintiffs again wrote to Defendants, noting the removal of the AUDI RING LOGO® from Shokan’s website, as well as the use of a new domain name for the website (i.e., shokan.com), but demanding that Defendants transfer registration of the 800allau-di.com domain to Plaintiffs and further complaining that Defendants’ use of the 800-ALL-AUDI vanity telephone number infringes the AUDI® mark. See Ex. Z to Cook Decl. The commencement of the present action followed on February 14, 2004. On May 7, 2004, Plaintiffs wrote to Defendants rejecting their offer of settlement because although Defendants agreed to comply with the terms of Plaintiffs’ October 20, 2003 letter, they did not agree to cease use of the 800-ALL-AUDI vanity telephone number. See Ex. AA to Cook Decl. By that same letter, Plaintiffs contend Defendants continue to violate the terms of the Settlement Agreement, a contention which did not appear in either of the previous cited correspondence. See id.; Exs. V and Z to Cook Decl. At issue in the present action are several alleged incidents of misappropriation of Plaintiffs’ AUDI® and AUDI RING LOGO® trademarks by Defendants. First, Plaintiffs object to Defendants’ use of the vanity telephone number, 1-800-ALL-AUDI, as well as the domain name, www.800allaudi.com as inappropriate uses of the AUDI® mark. Other alleged misappropriations of this mark include the use of “Used Audi Parts” or “Audi Used Parts” in advertisements, answering of Shokan’s business telephone, “all Audi,” use of “Shokan Audi Parts” as a signature block on 38,000 of Shokan’s electronic messages (“email”), and the use of allaudi. shokan@verizon.net as an email address to conduct Shokan business. Plaintiffs further allege that Defendants misappropriate the AUDI® mark with the placement of signs on Shokan’s business premises that read, “Audi Parts Warehouse,” and “1-800-ALL-AUDI.” Finally, Plaintiffs allege Defendants misappropriate the AUDI RING LOGO® with its use on the Shokan website as well as its appearance as a sign on Shokan’s business premises. Vanity Telephone Number Shokan has been using and advertising its 800-ALL-AUDI vanity telephone number for over twenty years. According to defendant Smith, over ninety seven percent of Shokan’s sales are made by telephone. See Smith Deck ¶ 39. On May 24, 1989, counsel for plaintiff Volkswagen wrote to defendant Smith complaining that a Shokan advertisement, which appeared in the April 3, 1989 issue of Autoweek magazine, infringes Audi trademarks in several ways as follows: use of the word, “AUDI” in block lettering; use of a logo which includes the name “Shokan” inside an oval and utilizes the Audi oval and lettering; and use of the word, “Quattro”. See Ex. 5 to Smith Deck The Shokan advertisement, which appeared in the April 3, 1989 issue of Autow-eek magazine, included the aforementioned alleged infringing uses, but also included the vanity telephone number, “800-ALL-AUDI.” See id., Ex. 9. The same advertisement appeared in the July, August and September 1990 issues of Car and Driver magazine. See id., Ex. 17. According to Volkswagen trademark paralegal, Linda Scipione, Audi acknowledges that it was aware of the April 3, 1989 Autoweek advertisement as well as the 1990 Car and Driver advertisements at the time that they appeared, “but believed that Shokan ceased its use of these advertisements as a result of the 1991 Settlement Agreement.” Deck of Linda Scipione, Nov. 19, 2007, ¶¶4, 6. Dkt. No. 105-2. Scipione further declares that Audi was unaware of Sho-kan’s use of the vanity telephone number after execution of the Settlement Agreement. See id., ¶7. Scipione also testified that Defendants were not asked to stop using the vanity telephone number in 1990 because “[v]anity telephone numbers weren’t a big deal back then.” Scipione Dep., 98:16-99:23, Ex. 7 to Smith Deck, Dkt. No. 97. Other advertisements including the “1-800-ALL-AUDI” .vanity telephone number appeared in the Spring and Fall 1997 issues of Quattro Quarterly. See Ex. 18 to Smith Deck Scipione declares that no one in Audi’s legal department was aware of these advertisements, a contention which is further supported by her deposition testimony as well as that of Audi’s in-house trademark. attorney, Debra Kingsbury. See Nov. 17, 2007 Scipione Deck ¶ 5; Dep. of Linda Scipione, Sept. 18, 2007, 76:7-11, 77:17-19, Ex. KK to Deck of John Cook, Nov. 20, 2007, Dkt. No. 105-9; Dep. of Debra Kingsbury, Sept. 18, 2007, 177:17-23, Ex. JJ to Cook Deck According to Scipione, Quattro Quarterly is not an official publication of Plaintiffs but instead is the national publication of the Audi Club of North America, a legally separate entity from Plaintiffs. See Nov. 17, 2007 Sci-pione Deck ¶ 5. At her deposition, however, Scipione testified that she understood the Audi Club of North America to be “associated with Audi AG” and when asked if she was aware that Audi sponsors the Audi Club of North America, Scipione replied “[t]hat would make sense because I knew there was some sort of connection[.]” See Scipione Dep., 76:18-25; 77:13-15. By her deposition, Scipione explains that while Audi is a sponsor of the Audi Club of North America, it is not the sole sponsor, and that several other companies, including Bridgestone Tires, Maplewood Imports, and Anderson Motorsport, sponsor the organization. See Nov. 17, 2007 Sci-pione Deck ¶ 5. Defendants clarify that while Audi is not the sole sponsor of the Audi Club of North America, it is the sole Gold sponsor, followed by several Silver, Bronze, and Contributing sponsors. See Smith Deck ¶ 91, Ex. 26, Dkt. No. 98. As evidence of Defendants’ knowledge that use of their vanity telephone number constitutes trademark infringement, Plaintiffs point to a letter dated February 21, 1994 wherein Smith notified Plaintiffs’ counsel that a competitor of Shokan was using the business name, “VW Parts Inc.” and inquired regarding whether such use was permissible. See Ex. Q to Cook Decl. Smith requested that he be contacted and provided his telephone number as “800-255-2834”. See id. In a follow-up letter dated May 18, 1994, Smith again asked for feedback regarding his competitor’s business name, and indicated that he would like his business name to be “AUDI PARTS INC.” See Ex. R to Cook Deck Accompanying the follow-up letter is a business card for Smith’s competitor, which includes the vanity telephone number, “1-800-VW-PARTS.” See id. Shortly thereafter, counsel for Plaintiffs notified Smith that the use of “VW” in the name of his competitor is an infringement of Volkswagen’s trademark, and accordingly, Smith would not be allowed to change Shokan’s name to “Audi Parts Inc.” See Ex. S to Cook Deck Counsel further notified Smith that the use of the “advertised telephone number of 1-800-VW-PARTS[]” also constitutes trademark infringement. See id. Domain Name Registration The domain name, 800allaudi.com was registered on February 1, 2001. See Ex. X to Cook Deck The “registrant” of the domain name is listed as “Shokan Coach-works,” followed by “John Smith” and the Shokan business address. See id. According to Smith, he did not, nor did he instruct anyone else to, register the domain name, 800allaudi.com. See Deck of John H. Smith, Oct. 31, 2007, ¶¶43, 45, Dkt. No. 97-1. Although Smith declares that the domain name was registered to Shokan, and not to him personally, see id. ¶ 44, a copy of the registration reflects that both Smith and Shokan are listed as registrant, see Ex. X to Cook Deck; Ex. 35 to Smith Deck Both Smith and Shokan are also listed as the administrative contact on the registration. See Ex. 35 to Smith Deck It is undisputed that Shokan has discontinued use of the 800allaudi.com domain name, and that as of the time of the filing of the pending motions, an Internet browser seeking to locate the website to which it refers will receive an error message. See Defs.’ Statement of Material Facts ¶¶ 40, 42, Dkt. No. 96-3; Pis.’ Resp. to Defs.’ Statement of Material Facts ¶¶ 40, 42. Trademarks on Website Plaintiffs submit a copy of an image taken from Defendants’ website, on which the AUDI RING LOGO® appears. See Ex. W to Cook Deck Smith declares that he is unaware of the AUDI RING LOGO® (“the Logo”) appearing on Shokan’s website for more than twenty-four hours. See Smith Deck ¶ 26. According to Smith, neither he nor any of Shokan’s employees knew of the existence of the Logo on the website until they received notification of same from Plaintiffs, as it was Shokan’s website designer, an independent contractor, who placed the logo on the website. See id. ¶¶ 30-31. Smith’s son, Aaron, testified that he was unaware of the existence of the Logo on the website until 2003 when Audi brought it to Defendants’ attention. See Dep. of Aaron Smith, Sept. 25, 2007, 25:1-26:14; 27:7-13, at Ex. 11 to Smith Deck, Dkt. No. 97. It is undisputed that Defendants received notice that the Logo appeared on their website in May 2003. See Pis.’ Statement of Material Facts ¶ 22, Dkt. No. 95-38; Defs.’ Resp. to Pis.’ Statement of Material Facts ¶ 22, Dkt. No. 107-2. Smith contends that the Logo was removed from the website within twenty-four hours of Shokan receiving notice of its existence, and that it has not appeared on the website since May 2003. See id. ¶ 28-29. According to the deposition testimony of Pat Guariglia, Shokan’s website designer, while it is true that either he or his partner put the AUDI RING LOGO® on the website, the content that “went live on the website had final approval ... [b]y ... either John Smith or Aaron Smith.” See Dep. of Pat Guariglia, Sept. 24, 2007, 36:25-37:3, 31:24-32:11, Ex. PP to Cook Decl. Guariglia also testified that the website went live sometime in 2001 and that the Logo appeared on the site at that time. See id., 27:15-30:4, 70:5-10. Plaintiffs have submitted images which are purported to represent the appearance of Shokan’s website at various times in the past. See Exs. NN, OO, QQ, RR and TT to Deck of Jacob Adams, Nov. 20, 2007, Dkt. No. 105-3. A trademark paralegal for Plaintiffs’ counsel declares that in order to produce the images of Shokan’s website, he utilized another website, www. archive.org, referred to as the “Internet Archive,” which provides “a collection of chronological records of various websites.” Id. ¶¶4-5, 9. Images, which Adams declares represent the appearance of the 800allaudi.com website on September 25, 2001 and February 6, 2003, both include the AUDI RING LOGO®. See Exs. NN and OO to Adams Deck Smith contends that the Shokan website contains the following language: “Shokan Coachworks is not affiliated with Audi AG. AUDI® is a registered trademark of Audi AG. You may visit Audi AG’s worldwide website at www.audi.com.” See Smith Deck ¶ 51. In support of this contention, Defendants submit a copy of their website home page dated July 9, 2007, which does reflect the cited disclaimer. Other images obtained from the Internet Archive, www. archive.org, which purportedly represent the appearance of Shokan’s website on January 26, 2004 and June 15, 2004, were submitted by Plaintiffs. See Exs. TT and QQ to Adams Deck, Dkt. No. 105-3. Those images reflect that the disclaimer appeared on the homepage of Shokan’s website, www.shokan.com, on June 13, 2004, but was absent from the website’s homepage on February 10, 2004. See id. Answering Telephone, “All Audi” According to Jared Cherry, a paralegal who is employed by Plaintiffs’ counsel, “[o]n multiple occasions” when he called Shokan “between May 13, 2003 and March 2004, ... the persons answering the telephone ... answered the phone by saying ‘all Audi’.” Deck of Jared Cherry, Oct. 30, 2007, ¶¶ 1-3, Dkt. No. 95-36. When asked if he ever answered the telephone at Sho-kan, “all Audi,” Smith replied, “I may have, but I don’t recall doing it routinely, no.” Smith Dep., Sept. 25, 2007, 131:13-16, at Ex. Y to Cook Deck Smith went on to state that he never heard any employees at Shokan answer the phone that way. See id., at 131:17-19. In a subsequent declaration in support of Defendants’ summary judgment motion, Smith states that “Shokan does not answer its telephone as “all Audit,]” and he “cannot remember a single instance where [he] answered the phone” that way or heard an employee answer the phone that way. See Smith Deck ¶¶ 52-53. Smith contends that Sho-kan employee Nancy Dow is responsible for answering the telephone at Shokan and has been instructed to, and indeed does, answer the phone by saying, “Shokan.” See id. ¶ 54. Shokan employees Nancy Dow and Aaron Smith both testified that they never answered the phone, “all Audi” nor have they ever heard anyone else answer the phone that way. See Dep. of Nancy Dow, Sept. 26, 2007, 44:10-16, at Ex. 35 to Supplemental Deck of John H. Smith, Nov. 20, 2007, Dkt. No. 107; Dep. of Aaron Smith, Sept. 25, 2007, 39:14-21, at Ex. 36 to Supplemental Smith Deck Finally, Pat Guariglia, Shokan’s website design consultant, testified that he did not recall specifically how the telephone was answered when he called the Shokan facility, and that “[s]ometimes it was probably just hello.” Dep. of Pat Guariglia, Sept. 24, 2007, 21:3-6; 55:20-25, Ex. PP to Decl. of John D. Cook, Nov. 20, 2007, Dkt. No. 105-9; Ex. 34 to Supplemental Smith Decl. Email Signature Block Plaintiffs contend that “[m]ost of the approximately 38,000 emails produced by Defendants use the signature block, ‘Sho-kan Audi Parts.’ ” Pis.’ Statement of Material Facts. ¶30. In support thereof, Plaintiffs cite to one email message, which does include the referenced signature block. See Ex. DD to Cook Decl., Dkt. No. 95-32. Defendants dispute the authenticity of the email message, claiming that “it has been manipulated by Audi’s counsel and does not appear in the format that would be viewed by a consumer.” See Defs.’ Resp. to Pis. Statement of Material Facts, at ¶ 30. Defendants specifically contend that none of the emails use the phrase, “Shokan Audi parts” as a signature block. Id. However, Defendants submit several email messages in support of their motion for summary judgment, which Smith states are “true and accurate copies of emails sent or received by Sho-kan.” Smith Decl. ¶ 88, Ex. 23, Dkt. No. 98. Many of said emails appear in the same format as the single email submitted by Plaintiffs, and include the same signature block, “Shokan Audi Parts.” See id.; Ex. DD to Cook Decl. Email Address Plaintiffs also contend that Defendants used the personal email address, allaudi. shokan@verizon.net to conduct Shokan business, and submit a copy of one email message in support of same. See Pis.’ Statement of Material Facts. ¶ 30; Ex. EE to Cook Decl. The single email submitted by Plaintiffs is a message from Smith to “webmaster@800allaudi.com.” See id. Smith declares that he “never used the email allaudi.shokan@verizon.net to communicate with any Shokan customers.” Supplemental Smith Decl. ¶ 102. Plaintiffs submit images of Defendants’ website homepage as it purportedly appeared on various dates in 2002 and 2003, which were obtained through an archive.com search as previously described. See Supplemental Decl. of Jared Cherry, Nov. 30, 2007, ¶ 9, Ex. 1, Dkt. No. 109-3. The images reflect that the email address allaudi.shokan@verizon.net appeared on Defendants’ website on July 24, 2002, November 20, 2002, February 6, 2002, March 25, 2003, September 22, 2003, and October 27, 2003. See id. Defendants point out that a copy of their website dated May 12, 2003, which appears as Exhibit D to the Complaint, reflects that the email address, sales@800allaudi.com, was used, not allaudi.shokan@verizon.net. See Ex. 12 to Smith Decl. Signs on Shokan’s Business Premises Plaintiffs submit photographs of certain doors at Shokan’s facility, which display what Plaintiffs call “signs” and Defendants refer to as “stickers”. See Exs. BB and CC to Cook Decl.; Transcript of Hearing, Jan. 8, 2008, Audi AG v. Shokan Coachworks, Inc., 07-CV-173 (N.D.N.Y) (“Tr.”), 38:7-17; 46:21-22. One photograph, which Plaintiffs claim is of “Shokan’s Office Door,” reveals the AUDI RING LOGO®, and a separate sign or sticker below which includes the phrase, “AUDI PARTS WAREHOUSE” and “1-800-ALL-AUDI.” See id. Ex. CC. The other photograph, which Plaintiffs claim is of the “Entry Door to Shokan’s Dismantling Shop” reveals the phrase, “AUDI PARTS WAREHOUSE” and “1-800-ALL-AUDI.” See id. Ex. DD. Shokan employees Nancy Dow and Aaron Smith testified that the door with the AUDI RING LOGO® on it is actually Shokan’s lunchroom door. See Dow Dep., 31:4-22, at Ex. 35 to Supplemental Smith Deck; A. Smith Dep., 60:7-20, at Ex. 36 to Supplemental Smith Deck Defendants submit photographs of what Smith contends is Shokan’s lunchroom, which includes the door identified by Plaintiffs as “Shokan’s Office Door.” See Smith Deck ¶ 89, Ex. 24. Defendant Smith contends that customers may purchase Audi parts from Shokan only over the Internet or by telephone, and not at Shokan’s facility, but that under certain circumstances, customers may enter the Shokan facility to pick up a part which has been previously purchased. See Smith Deck ¶¶ 15-17. Plaintiffs submit copies of several Shokan emails providing driving directions to Shokan’s facility, which Plaintiffs say demonstrates that “a significant number” of customers — at least forty three — -visited the Shokan facility during the period June 13, 2005 through September 19, 2007. See Pis.’ Resp. to Defs.’ Statement of Material Facts, ¶¶ 22-23; Ex. MM to Cook Deck Smith contends, however, that “[f|ar less than 1% of the parts sold by Shokan are picked up by a customer.” Id. ¶ 18. Moreover, according to Smith, a customer who enters Sho-kan’s facility is not permitted to browse or shop. See id. ¶ 19. Smith also declares that no customer has ever been inside the employee lunchroom, and that customers are not permitted to enter an area of Shokan’s facility where the lunchroom door can be seen. See Smith Deck ¶¶ 47-48. Defendants note Dow’s testimony that she is not aware that anyone other than a Shokan employee has ever been in the lunchroom. See Dow Dep., 47:17-25, at Ex. 35 to Supplemental Smith Deck However, Dow also testified that when someone comes to the Shokan facility for a meeting, the meeting would “possibly” take place in the lunchroom. See Dow Dep., 30:8-31:3, Ex. SS to Cook Deck Smith further contends that “Shokan does not use any signage at its facility that can be viewed by the public.” Smith Deck ¶ 49. Dow testified that when a customer comes to Shokan’s facility to pick up a part, the customer goes “[ijmmediately inside the shop door.” Dow Dep., 44:17-19, Ex. SS to Cook Deck Use of “Audi Parts Warehouse” According to defendant Smith, in 1991, Shokan forwarded to Audi for approval a shipping box that Shokan intended to use to deliver Audi parts, which included the phrase, “AUDI PARTS WAREHOUSE.” See Smith Deck ¶ 65; Ex. 16. The phrase, “AUDI PARTS WAREHOUSE” also appeared in the July, August and September 1990 Car and Driver advertisements as well as the Fall 1997 Quattro Quarterly advertisement. See id. Exs. 17, 18. Scipione notes that by the terms of the Settlement Agreement, Shokan was permitted to use their remaining inventory of boxes for six months, and that subsequent to the six-month period, Audi did not approve Shokan’s use of “Audi Parts Warehouse”. See Nov. 30, 2007 Scipione Decl., ¶ 4, Dkt. No. 109-2. See also Scipione Dep., 88:1989:25, Ex. WW to Cook Decl., Dkt No. 109-8. Audi’s in-house counsel, Debra Kingsbury, testified that the Settlement Agreement permits Shokan’s use of their boxes after the six-month period, as long as the infringing Shokan Logo is masked by tape or an adhesive label. See Kingsbury Dep., 94:24-98:11, Ex. XX to Cook Deck Dkt. No. 109-9. See also Ex. O to Cook Decl. The advertisement which appeared in the April 3, 1989 issue of Autoweek included the phrase, “USED PARTS WAREHOUSE” underneath a much larger, boldfaced “AUDI” in block lettering. See id. Ex. 9. Plaintiffs thereafter objected in writing to, among other things, the use of “AUDI” in block lettering. See Ex. 5 to Smith Deck IV. Discussion A. Summary Judgment Standard A motion for summary judgment shall be granted “if the pleadings, the discovery and disclosure materials on file, and any affidavits show that there is no genuine issue as to any material fact and that the movant is entitled to a judgment as a matter of law.” Fed.R.Civ.P. 56(c). See also Beyer v. County of Nassau, 524 F.3d 160, 163 (2d Cir.2008). “In ruling on a motion for summary judgment, the district court may rely on any material that would be admissible or usable at trial.” Major League Baseball Props., Inc. v. Salvino, Inc., 542 F.3d 290, 309 (2d Cir.2008) (internal quotation and citation omitted). The movants have the burden to show that no genuine factual dispute exists. See Vermont Teddy Bear Co., Inc. v. 1-800 Beargram Co., 373 F.3d 241, 244 (2d Cir.2004) (citing Adickes v. S.H. Kress & Co., 398 U.S. 144, 157, 90 S.Ct. 1598, 26 L.Ed.2d 142 (1970)). Moreover, when the court is deciding a motion for summary judgment, it must resolve all ambiguities and draw all reasonable inferences in the non-movant’s favor. See id. However, “where the movant fails to fulfill its initial burden of providing admissible evidence of the material facts entitling it to summary judgment, summary judgment must be denied, even if no opposing evidentiary matter is presented, for the non-movant is not required to rebut an insufficient showing.” Giannullo v. City of New York, 322 F.3d 139, 140 -141 (2d Cir.2003) (internal quotation and citation omitted). When deciding whether a material issue of fact is in dispute, the court is cognizant that a fact is “material” if “it might affect the outcome of the suit under governing law.” White v. Haider-Shah, No. 9:05-CV-193, 2008 WL 2788896, at *4-5 (N.D.N.Y. Jul. 17, 2008) (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 2510, 91 L.Ed.2d 202 (1986)). Also, “[a] material fact is genuinely in dispute ‘if the evidence is such that a reasonable jury could return a verdict for the nonmoving party.’ ” Id., quoting Anderson, 477 U.S. at 248, 106 S.Ct. at 2510. B. Affirmative Defenses of Acquiescence and, Laches The court necessarily begins with an analysis of Defendants’ laches and acquiescence defenses before reaching the merits of Plaintiffs’ claims under the Lanham Act. See Black Diamond Sportswear, Inc. v. Black Diamond Equip., Ltd., No. 06-3508-cv, — Fed.Appx. -, -, 2007 WL 2914452, at *1 (2d Cir. Oct. 5, 2007) (citing Patsy’s Brand, Inc. v. I.O.B. Realty, Inc., 317 F.3d 209, 216 (2d Cir.2003)). By way of affirmative defenses, Defendants argue that Plaintiffs’ claims, solely as they relate to Shokan’s use of its vanity telephone number and the phrase, “Audi Used Parts”, are barred by the doctrines of acquiescence and laches. The elements of the defense of acquiescence are: “(1) the senior user actively represented that it would not assert a right or a claim; (2) the delay between the active representation and assertion of the right or claim was not excusable; and (3) the delay caused the defendant undue prejudice.” ProFitness Physical Therapy Center v. Pro-Fit Orthopedic and Sports Physical Therapy, P.C., 314 F.3d 62, 67 (2d Cir.2002) (quoting Times Mirror Magazines, Inc. v. Field & Stream Licenses Co., 294 F.3d 383, 395 (2d Cir.2002)). The elements of laches, succinctly put, are both unreasonable delay and prejudice. See Cayuga Indian Nation of New York v. Pataki, 413 F.3d 266, 283 (2d Cir.2005); ProFitness, 314 F.3d at 67. “Although both acquiescence and laches connote consent by the owner to an infringing use of his mark, acquiescence implies active consent, while laches implies a merely passive consent.” ProFitness, 314 F.3d at 67-68. Defendants argue that all of the elements of their defenses of acquiescence and laches exist here. First, according to Defendants, Plaintiffs expressly allowed use of the vanity telephone number and the phrase “Audi Used Parts” by the terms of the 1991 Settlement Agreement. See Ex. 2 to Smith Deck Defendants further argue that they have been using the vanity telephone number for over twenty years, and Plaintiffs have been aware of said use for at least eighteen years. In support of same, Defendants cite a Shokan advertisement which appeared in the April 3, 1989 edition of Autoweek magazine, and which prompted Audi’s lawsuit in 1990. See Exs. 5 & 9 to Smith Deck, Dkt. No. 97. While the advertisement contained both the vanity telephone number and the phrase, “Used Parts Warehouse”, neither usage was identified by Plaintiffs in their list of concerns. See id. Next, Defendants argue that Plaintiffs’ delay in asserting their claims is inexcusable and unreasonable, citing Volkswagen paralegal Scipione’s testimony that Defendants were not asked to stop using the vanity telephone number back in 1990 because “[vjanity telephone numbers weren’t a big deal back then.” Scipione Dep., 98:16-99:23, Ex. 7 to Smith Decl., Dkt. No. 97. Finally, Defendants argue they are prejudiced by Plaintiffs’ delay in bringing suit because over ninety seven percent of Shokan’s sales are made by telephone. See Smith Deck ¶ 39. Plaintiffs counter that (1) the terms of the 1991 Settlement Agreement unambiguously refute Defendants’ claim of consent; (2) even if consent may be proved, Defendants exceeded the scope of any acquiescence in their unforeseeable use of 800-ALL-AUDI beyond that contemplated by the Settlement Agreement; (3) Defendants’ bad faith justifies any delay by Plaintiffs in filing suit; and (4) because the likelihood of confusion is overwhelming, it clearly outweighs the effect of any delay. Because the parties disagree as to the effect of the terms of the Settlement Agreement, analysis of Defendants’ acquiescence and laches defenses must begin with an interpretation of said Agreement. It is important to note that “[a] settlement agreement is a contract that is interpreted according to general principles of contract law.” Omega Engineering, Inc. v. Omega, S.A., 432 F.3d 437, 443 (2d Cir.2005). It is true that under New York law, where the terms of a contract are ambiguous but relevant extrinsic evidence as to its meaning is available, interpretation of same is a question of fact. See New Windsor Volunteer Ambulance Corps, Inc. v. Meyers, 442 F.3d 101, 112 (2d Cir.2006) (applying New York contract law principles to determine an issue of property ownership underlying a federal cause of action). However, the initial inquiry of whether a contract is ambiguous or unambiguous is a question of law to be decided by the 20 court. See In re Delta Air Lines, Inc., No. 05-17923, et al., 2008 WL 4444001, at *5 (S.D.N.Y. Sept. 29, 2008) (citing Nowak v. Ironworkers Local 6 Pension Fund, 81 F.3d 1182, 1192 (2d Cir.1996)). If the court finds the contract is unambiguous on its face, it may then construe the contact as a matter of law, and grant summary judgment. See Medtech Products Inc. v. Ranir, LLC, No. 07-CV-3302, 596 F.Supp.2d 778, -, 2008 WL 4525510, at *20 (S.D.N.Y. Sept. 30, 2008) (citing Metro. Life Ins. Co. v. RJR Nabisco Inc., 906 F.2d 884, 889 (2d Cir.1990)). See also Deutsche Bank Sec., Inc. v. Rhodes, 578 F.Supp.2d 652, 662-63 (S.D.N.Y.2008). “A contract is unambiguous on its face if it ‘has a definite and precise meaning, unattended by danger of misconception in the purport of the [contract] itself, and concerning which there is no reasonable basis for a difference of opinion.’ ” Id. (quoting Sayers v. Rochester Tel. Corp. Supplemental Mgmt. Pension Plan, 7 F.3d 1091, 1095 (2d Cir.1993) (quoting Breed v. Ins. Co. of N. Am., 46 N.Y.2d 351, 355, 413 N.Y.S.2d 352, 385 N.E.2d 1280 (1978))). On the other hand, “[w]here reasonable minds could be said to differ because the language the parties used in their written contract is susceptible to more than one meaning-each as reasonable as the other-and where extrinsic evidence of the parties’ actual intent exists, it should be submitted to the trier of fact.” Consarc Corp. v. Marine Midland Bank, N.A., 996 F.2d 568, 573 (2d Cir.1993). However, it is important to note that a contract may not be deemed ambiguous simply because the parties “urge different interpretations” where the language used is “otherwise plain.” Metro. Life, 906 F.2d at 889. This is so especially where the interpretation urged by one party would “strain[ ] the contract language beyond its reasonable and ordinary meaning.” Id. (quoting Bethlehem Steel Co. v. Turner Constr. Co., 2 N.Y.2d 456, 459, 161 N.Y.S.2d 90, 93, 141 N.E.2d 590, 593 (1957)). Plaintiffs argue that by the express terms of paragraphs three and four of the Settlement Agreement, Shokan agreed not to infringe Audi’s trademarks, “including the word ‘Audi,’ ” and that Sho-kan agreed “not to use the word Audi’, except ... as an adjective to describe the availability of parts or repair services for Audi vehicles .... ” Cook Deck Ex. O, ¶¶ 3, 4. Accordingly, Plaintiffs argue, the Settlement Agreement unambiguously condemns the use of the word, “Audi” in Defendants’ vanity telephone number. Plaintiffs’ argument is without merit. While relying on the language of paragraphs three and four of the Settlement Agreement, Plaintiffs fail to acknowledge that by the express language of paragraph five, they agreed that the attached advertisement, which clearly includes the vanity telephone number, 1-800-ALL-AUDI, as well as the phrase, “Audi Used Parts”, “meet[s] the requirements of paragraphs 3 and 4, and shall not be challenged as infringing upon Audi AG’s trademarks or trade dress.” Ex. 2 to Smith Deck; Ex. O to Cook Deck Plaintiffs attempt to make an end run around this provision by arguing that the purpose of the Settlement Agreement was to address their claim that the Shokan Logo was an infringement of Audi’s Football Logo®, and therefore did not involve Shokan’s use of the vanity telephone number. However, according to the express language of paragraph five of the Settlement Agreement, Plaintiffs “agree that Shokan’s new logo, ..., and the advertisement attached as Exhibit A meet the requirements of paragraphs . 3 and 4, and shall not be challenged as infringing upon Audi AG’s trademarks or trade dress.” Id. (emphasis added). The “advertisement attached as Exhibit A” clearly, includes the vanity telephone number and the phrase, “Audi Used Parts.” See id. Thus, by the “definite and precise meaning” of the language in the Settlement Agreement, Plaintiffs agreed that the vanity telephone number, 1-800-ALL-AUDI, as well as the language, “Audi Used Parts”, do not infringe their trademarks. Medtech Products Inc., 596 F.Supp.2d at -, 2008 WL 4525510, at *20. Plaintiffs’ attempt to have this court interpret the language of paragraph five to refer only to the Shokan logo, despite the language which clearly reflects that both the Shokan logo and the attached advertisement do not infringe Plaintiffs’ trademarks, would “strain[ ] the [Agreement’s] language beyond its reasonable and ordinary meaning.” Metro. Life, 906 F.2d at 889. Accordingly, because the Settlement Agreement unambiguously provides that Shokan’s use of the vanity telephone number, 1-800-ALL-AUDI, as well as the phrase, “Audi Used Parts”, do not infringe Plaintiffs’ trademarks or trade dress “and shall not be challenged” as such, the first element of Defendants’ acquiescence defense, that Plaintiffs actively represented they would not assert a right or a claim, is established as a matter of law. See Ex. 2 to Smith Deck; Ex. 0 to Cook Deck The court’s analysis of Defendants’ acquiescence and laches defenses does not end here, however. Plaintiffs also argue that even if the court concludes they consented to Defendants’ use of the vanity telephone number, Defendants still cannot establish inexcusable delay or undue prejudice. Plaintiffs first contend that Defendants exceeded the scope of any acquiescence in their unforeseeable use of 800-ALL-AUDI, beyond that contemplated by the Settlement Agreement, and therefore, Defendants cannot establish that they relied to'their detriment on Plaintiffs’ consent. In support of same, Plaintiffs point to ProFitness Physical Therapy Center v. Pro-Fit Orthopedic and Sports Physical Therapy, P.C., 314 F.3d 62 (2d Cir.2002). There, the court found that “[w]hile a plaintiff may acquiesce in some uses of the mark and in any resulting likelihood of consumer confusion, that acquiescence does not extend to a use that has not yet materialized and is not foreseeable. By using the mark in a different manner or in a new geographic area, a defendant may exceed the scope of the plaintiffs consent and be exposed to liability for that extra-consensual use.” Id., at 69. However, ProFitness involved an acquiescence defense to a trademark infringement claim based on the plaintiffs failure to respond to defendant’s notice that it would change its business name to avoid confusion or further conflict. See id., at 66. Here, the parties entered into a Settlement Agreement whereby Plaintiffs unambiguously consented to Defendants’ use of Plaintiffs’ trademark. In ProFitness, the defendant opened an office in Manhattan, where the plaintiff also had offices, which prompted the trademark infringement action. See id. Here, Plaintiffs have failed to identify any facts which would support a conclusion that Defendants have exceeded the scope of their usage of the vanity telephone number beyond that contemplated by the Settlement Agreement. Instead, Plaintiffs cite the other alleged instances of infringement on behalf of Defendants, including the use of the AUDI® and AUDI RING LOGO® trademarks in their email signature and email address, on their website, and on signs at their business premises, as usage which exceeds the scope of the Settlement Agreement. Defendants assert acquiescence and laches defenses solely as to their use of the vanity telephone number and the phrase, “Audi Used Parts.” Accordingly, Plaintiffs’ conclusory argument that Defendants’ use of the vanity telephone number exceeded the scope of the Settlement Agreement does not in any way dimmish Defendants’ assertion that they relied on Plaintiffs’ consent to their detriment. It is undisputed that Shokan has been using and advertising its 800-ALL-AUDI vanity telephone number for over twenty years. Moreover, according to Smith’s declaration, an overwhelming majority of Shokan’s sales are made by telephone. See Smith Decl. ¶ 39. Significantly, Plaintiffs do not cite any evidence in the record which would contradict this assertion. Instead, Plaintiffs merely note that Defendants also have an online store on the Shokan website, a fact which is not inconsistent with Smith’s assertion that ninety-seven percent of Shokan’s sales come from telephone orders. Accordingly, there being no question of material fact regarding Defendants’ detrimental reliance on Plaintiffs’ consent, said element of the acquiescence and laches defenses is established as a matter of law. Consent and prejudice having been established by Defendants as a matter of law, Plaintiffs nonetheless argue that Defendants cannot establish the final element of their acquiescence and laches defenses, to wit, inexcusable delay, because (1) Defendants’ bad faith justifies any delay by Plaintiffs in filing suit and (2) the overwhelming likelihood of confusion here clearly outweighs the effect of any delay. In support of these arguments, Plaintiffs contend that their delay in filing suit is excused under the doctrine of “progressive encroachment” which provides that a plaintiff is not obligated to file suit until the likelihood of confusion “looms large” and its rights to trademark protection have clearly ripened. See ProFitness, 314 F.3d at 68. However, it is also true that “a plaintiff cannot simply sleep on his rights” and still gain protection from the doctrine of progressive encroachment. Id. Here, Plaintiffs contend that they did not become aware of Defendants’ use of the vanity telephone number until 2003, and asserted their trademark infringement claims shortly thereafter. The evidence belies such an assertion, however, considering the inclusion of the vanity telephone number, in the very advertisement that prompted Plaintiffs’ 1990 lawsuit. Plaintiffs also contend that Defendants’ bad faith intentional copying of Plaintiffs’ trademarks prevents a finding of inexcusable delay under the doctrine of unclean hands. Again, Defendants assert acquiescence and laches defenses solely as to Plaintiffs’ infringement claims regarding use of the vanity telephone number and the phrase, “Audi Used Parts.” Plaintiffs fail to cite any evidence in the record which would support a finding that either usage by Defendants amounted to a bad faith intent to infringe Plaintiffs’ trademark. Accordingly, Plaintiffs’ progressive encroachment and unclean hands arguments fail. Plaintiffs’ final argument, that an overwhelming likelihood of confusion prevents a finding of inexcusable delay, also must fail. Because the use of the vanity telephone number and the phrase, “Audi Used Parts” are sanctioned by the express terms of the Settlement Agreement, the court need not reach a likelihood of confusion analysis regarding same. It is undisputed that at least twelve years passed between the execution of the Settlement Agreement and Plaintiffs’ commencement of the present action. Therefore, Defendants have established the final element of their acquiescence and laches defenses as a matter of law. Accordingly, Defendants’ motion for summary judgment on all claims regarding their use of the 1-800-ALL-AUDI vanity telephone number and the phrase, “Audi Used Parts” is granted. C. Breach of Contract Defendants argue they are entitled to summary judgment on their breach of contract claim because Plaintiffs breached the terms of the 1991 Settlement Agreement when they initiated this lawsuit. Defendants rely on the above cited language in paragraph five of the Agreement, wherein Plaintiffs agreed that the attached advertisement, which includes the 1-800-ALL-AUDI vanity telephone number as well as the phrase, “Audi Used Parts” does not infringe Plaintiffs’ trademarks, and wherein Plaintiffs agreed not to challenge the content of the advertisement. See Ex. 2 to Smith Decl. Plaintiffs fail to provide any meaningful opposition to Defendants’ motion for summary judgment regarding the breach of contract claim. Included in a footnote to Plaintiffs’ papers in opposition to Defendants’ motion for summary judgment, Plaintiffs refer to Defendants’ breach of contract claim as “ridiculous” and tersely argue that the motion for summary judgment regarding said claim should be denied for all of the reasons set forth in Plaintiffs’ arguments against the acquiescence and laches defenses. See Pis.’ Mem. of Law in Opp’n to Defs.’ Mot. for Summ. J., at 17, n. 5, Dkt. No. 105. Defendants have prevailed on their acquiescence and laches defenses to any of Plaintiffs’ claims regarding the use of the vanity telephone number and the phrase, “Audi Used Parts.” In doing so, Defendants have established the existence of an agreement and that Plaintiffs have breached the agreement. Defendants also claim they have suffered damages by said breach, which include the fees and costs to defend this lawsuit. Defendants having established the elements of their claim for breach of contract under New York Law, Defendants’ motion for summary judgment regarding said claim is granted. See Chaffee v. Farmers New Century Ins. Co., No. 5:04-CV-1493, 2008 WL 4426620, at *2 (N.D.N.Y. Sept. 24, 2008). D. Nominative Fair Use Throughout their papers in support of their motion for summary judgment, and in opposition to Plaintiffs’ motion, Defendants repeatedly contend that they only use the Audi Marks to fairly and accurately describe the Audi parts they sell. Pursuant to 15 U.S.C. § 1115(b)(4), it is a defense to the incontestability of a registered trademark: [t]hat the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, of the party’s individual name in his own business, or of the individual name of anyone in privity with such party, or of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin[.] 15 U.S.C.A. § 1115(b)(4) (2002). At oral argument, Defendants assert, for the first time, a nominative fair use defense, urging this court to adopt the legal analysis set forth by the Court of Appeals for the Third Circuit in Century 21 Real Estate Corporation v. LendingTree, Incor porated, 425 F.3d 211 (3d Cir.2005). See Tr. 42:19-45:3. Consequently, the court has received virtually no briefing on this issue. The defense of nominative fair use, originally set forth by the Ninth Circuit in New Kids on the Block v. News America Publishing Incorporated, 971 F.2d 302 (9th Cir.1992), is appropriate where (1) the product or service in question is not readily identifiable without use of the trademark; (2) only so much of the marks are used as is reasonably necessary to identify the product or, service; and (3) the user does nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder. See 971 F.2d at 308. The Ninth Circuit has since held that where nominative fair use is asserted, the aforementioned three-prong test replaces the “likelihood of confusion” test for trademark cases. See Playboy Enters., Inc. v. Welles, 279 F.3d 796, 801 (9 th Cir.2002). In Century 21, the Third Circuit declined to entirely supplant the likelihood of confusion test, instead setting forth a two-step analysis in nominative fair use cases. See Century 21, 425 F.3d at 220-222. Initially, according to the Third Circuit’s analysis, the plaintiff must prove a likelihood of confusion based on a balancing of the following four factors: (1) the price of the goods and other factors indicative of the care and attention expected of consumers when making a purchase; (2) the length of time the defendant has used the mark without evidence of actual confusion; (3) the intent of the defendant in adopting the mark; and (4) the evidence of actual confusion. Id., at 222, 225-226. Once the plaintiff meets its burden of proving a likelihood of confusion, the defendant has the burden of showing: (1) that the use of plaintiffs mark is necessary to describe both the plaintiffs product or service and'the defendant’s product or service; (2) that the defendant uses only so much of the plaintiffs mark as is necessary to describe plaintiffs product; and (3) that the defendant’s conduct or language reflect the true and accurate relationship between plaintiff and defendant’s products or services. Id., at 222. The Court of Appeals for the Second Circuit has not yet analyzed a nominative fair use defense. Cf. Weight Watchers Int’l, Inc. v. Luigino’s, Inc., 423 F.3d 137, 143, n. 4 (2d Cir.2005) (finding it unnecessary to reach the nominative fair use argument); Courtenay Commc’ns Corp. v. Hall, 334 F.3d 210, 213, n. 1 (2d Cir.2003) (in vacating a district court’s dismissal of a complaint alleging various Lanham Act violations, cited New Kids to support its conclusion that defendant’s alternate ground for dismissal, to wit, insufficient allegations of false endorsement, is without merit as defendant’s use “suggests affiliation, sponsorship or endorsement” of its website by plaintiff); Chambers v. Time Warner, Inc., 282 F.3d 147, 156 (2d Cir.2002) (acknowledging the district court’s application of the nominative fair use set forth in New Kids to support its dismissal of the complaint, but finding allegations of other instances of infringing conduct sufficient to remand for further proceedings). However, of the district courts in this circuit that have discussed a nominative fair use defense, all have followed the standard set forth by the Ninth Circuit in New Kids, rather than the Third Circuit’s standard set forth in Century 21. See Yurman Studio, Inc. v. Castaneda, Nos. 07 Civ. 1241, 07 Civ. 7862, 591 F.Supp.2d 471, 488-89, 2008 WL 3861219, at *7 (S.D.N.Y. Aug. 19, 2008); Tiffany (NJ) Inc. v. eBay, Inc., 576 F.Supp.2d 463, 495, n. 27 (S.D.N.Y.2008); S & L Vitamins, Inc. v. Australian Gold, Inc., 521 F.Supp.2d 188, 207 (E.D.N.Y.2007); Merck & Co., Inc. v. Mediplan Health Consulting, Inc., 425 F.Supp.2d 402, 413 (S.D.N.Y.2006); Nasdaq Stock Mkt., Inc. v. Archipelago Holdings, LLC, 336 F.Supp.2d 294, 304 (S.D.N.Y.2004). The single court that acknowledged a conflict between Century 21 and Playboy regarding whether nominative fair use should be characterized as an affirmative defense or as a substitute to the likelihood of confusion analysis concluded that the result there would be the same under either case. See Tiffany, 576 F.Supp.2d at 495, n. 27. Accordingly, this court declines to deviate from the other district courts in our circuit, and will likewise apply the Ninth Circuit’s analysis to this case. Pursuant to the Ninth Circuit’s holding in Playboy, the court shall conduct the three-prong analysis set forth in New Kids instead of a likelihood of confusion balancing test, due to Defendants’ assertion of a nominative fair use defense. See Playboy, 279 F.3d at 801. Again, pursuant to New Kids, nominative fair use may be found where (1) the product or service in question is not readily identifiable without use of the trademark; (2) only so much of the marks are used as is reasonably necessary to identify the product or service; and (3) the user does nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder. See New Kids, 971 F.2d at 308. “[U]se of [a trademark] is only nominative if it does not imply sponsorship or endorsement by the trademark holder.” Yurman Studio, Inc., 591 F.Supp.2d at 489, 2008 WL 3861219, at *7 (citation omitted). Here, Defendants have failed to sufficiently explain how any of the remaining alleged incidents of infringement are appropriately deemed nominative fair use of Plaintiffs’ marks. To summarize, those remaining alleged incidents of infringement are (1) Defendants’ use of the AUDI RING LOGO® on their website; (2) Defendants’ use of the AUDI RING LOGO® as a sign or sticker on a door at their business premises; (3) Defendants’ use of the AUDI® mark by answering their business telephone, “all Audi”; (4) Defendants’ use of the AUDI® mark in their email signature block, “Shokan Audi Parts”; (5) Defendants’ use of the AUDI® mark in their email address, allaudi.shokan@ verizon.net; and (6) Defendants’ use of the AUDI® mark in the phrase, “Audi Parts Warehouse” as a sign or sticker on a door at their business premises. Unlike in New Kids, where the court found nominative fair use to exist because, among other things, there was nothing to suggest the plaintiff sponsored defendant’s use of the mark, here, each of the alleged infringing uses could imply sponsorship by Plaintiffs of Defendants. Accordingly, Defendants here cannot avoid a finding of liability on Plaintiffs’ infringement claims based on a nominative fair use defense. Therefore, the court will address the merits of those claims, including the likelihood of confusion analysis. E. Trademark Infringement and False Designation of Origin Claims Plaintiffs’ claims for trademark infringement under 15 U.S.C. § 1114; false designation of origin under 15 U.S.C. § 1125(a); and common law trademark infringement, may all be analyzed under the same two-prong test set forth in Gruner + Jahr USA Publishing v. Meredith Corporation, 991 F.2d 1072 (2d Cir.1993), which is that first the court must decide whether the plaintiff has a valid mark that is entitled to protection, and then whether the defendant’s use of the mark is likely to cause consumers confusion as to the origin or sponsorship of the defendant’s goods. See Virgin Enters. Ltd. v. Nawab, 335 F.3d 141, 146 (2d Cir.2003) (noting that Gruner two-prong test applies to claims for trademark infringement, whether brought under 15 U.S.C. § 1114 or 15 U.S.C. § 1125(a)); Krasnyi Oktyabr, Inc. v. Trilini Imports, 578 F.Supp.2d 455, 467 (E.D.N.Y.2008) (citing Momingside Group Ltd. v. Morningside Capital Group, L.L.C., 182 F.3d 133, 137 (2d Cir.1999)) (noting that a false designation of origin claim under 15 U.S.C. § 1125(a) may be analyzed under the same elements as a claim for trademark infringement under § 1114); FragranceNet.com, Inc. v. FragranceX.com, Inc., 493 F.Supp.2d 545, 548 (E.D.N.Y.2007) (noting that the elements of a claim for trademark infringement under 15 U.S.C. § 1125(a) are identical to a claim for common law trademark infringement). Plaintiffs bear the burden of proving both elements of their trademark infringement claims. See Gruner, 991 F.2d at 1075. 1. Valid Mark Registration of a trademark entitles the owner to a presumption that its mark is valid and renders the mark incontestible after five years of continuous use. See Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 209, 120 S.Ct. 1339, 1342, 146 L.Ed.2d 182 (2000) (citing 15 U.S.C. §§ 1057(b); 1065). Plaintiffs have submitted copies of their trademark registrations for the AUDI® and AUDI RING LOGO® trademarks, registration numbers 708,352 and 906,525, respectively. See Exs. A & B to Cook Decl. In addition, Volkswagen trademark paralegal Linda Scipione declares that said trademarks have been in use in the United States since they were registered on December 13, 1960 and January 26, 1971, respectively. See ¶¶4 & 5 to Decl. of Linda Scipione, Oct. 31, 2007, Dkt. No. 95-37. A search by this court of the United States Patent and Trademark Office’s (“USPTO”) Trademark Electronic Search System (“TESS”) verifies the existence of the marks, their issue dates, and that same are owned by defendant Audi. Defendants have offered no evidence to the contrary. Instead, Defendants incorrectly contend that proof of ownership of a trademark must be certified, citing caselaw which merely supports the proposition that trademarks may be authenticated because they are certified, not that certification is required. See Nabisco v. Warner-Lambert Co., 32 F.Supp.2d 690, 695 (S.D.N.Y.1999). Accordingly, Plaintiffs have established the validity of the AUDI® and AUDI RING LOGO® trademarks as a matter of law. 2. Likelihood of Consumer Confusion When deciding the issue of whether there is a likelihood of consumer confusion, courts in the Second Circuit apply the eight factors set forth in Polaroid Corporation v. Polarad Electronics Corporation, 287 F.2d 492, 495 (2d Cir.1961). See Natural Organics, Inc. v. Nutraceutical Corp., 426 F.3d 576, 578 (2d Cir.2005) (citing Polaroid, at 495). The “Polaroid factors” are as follows: (1) strength of the plaintiffs mark; (2) similarity of the parties’ marks; (3) proximity of the parties’ products in the marketplace; (4) likelihood that the plaintiff will bridge the gap between the products (enter a market related to that in which the defendant sells its product); (5) evidence of actual confusion between the two marks; (6) the defendant’s bad faith (intent in adopting the mark); (7) quality of the defendant’s product; and (8) sophistication of the relevant consumer group. See Playtex Prods., Inc. v. Georgian-Pacific Corp., 390 F.3d 158, 162 (2d Cir.2004); Natural Organics, Inc., 426 F.3d at 578. Although district courts are given “considerable deference” in balancing these factors, the Second Circuit has instructed that courts generally should not treat any single factor as dispositive; nor should a court treat the inquiry as a mechanical process by which the party with the greatest numb