Full opinion text
MEMORANDUM DECISION AND ORDER CLARK WADDOUPS, District Judge. INTRODUCTION The parties in this action sell replacement contact lenses over the Internet. 1-800 Contacts, Inc. (“Plaintiff’) is the owner of certain service marks and contends that Lens.com, Inc. (“Defendant”) has used the service marks in commerce without its consent. Specifically, Plaintiff contends that Defendant and its affiliates bid on the service marks as keywords to generate a sponsored link for Defendant on Google and other search engines. Moreover, because Defendant’s sponsored links were generated when a consumer entered “1800Contacts” as the search term, the sponsored links were likely to cause confusion as to source, affiliation, or sponsorship. Plaintiff moves for partial summary judgment on its claims for trademark infringement and secondary liability. It also moves for summary judgment on Defendant’s defense that its use of Plaintiffs mark as a keyword is not a “use in commerce.” Finally, it moves for summary judgment on Defendant’s descriptiveness and fair use defenses. In turn, Defendant moves for summary judgment and seeks dismissal of all claims and causes of action in the Amended Complaint. The court grants Plaintiffs motion on Defendant’s defense that purchase of a keyword is not a use in commerce. The court otherwise denies Plaintiffs motion for summary judgment. Although purchase of a keyword is a use in commerce, Defendant is nonetheless entitled to summary judgment on all claims and causes of action in the Amended Complaint for the reasons discussed .below. FACTUAL BACKGROUND General Business Facts Plaintiff sells replacement contact lenses through various channels, including the Internet. It owns two service marks, which were registered in 2003. One service mark is the word mark “1 800CON-TACTS” and the other service mark is the following stylized word mark: Because the marks have been in use for more than five years, they are statutorily incontestable. Since its inception in 1995, Plaintiff has spent over $220 million in advertising through television, radio, newspapers, the Internet, e-mail, and direct mail. Between 2003 and 2008, Plaintiff spent $11 million advertising with Google alone. For at least five years, Plaintiff has retained Synovate to conduct “awareness” surveys to determine the strength of its service marks. In 2008, Plaintiffs mark ranked first in consumer awareness among contact lens wearers. Defendant also sells replacement contact lenses, and has been in competition with Plaintiff since 1998. It owns the service mark “1-800-GET-LENS.” The service mark was registered on May 21, 2002 by another company, but Defendant subsequently acquired the mark. Defendant also has previously claimed common trademark rights to “1-800 Lens.com” and recently obtained federal registration of it. Unlike Plaintiff, Defendant only advertises on the Internet. Between 2003 and 2008, Defendant spent between $3 million to $4.7 million in Internet advertising. Besides marketing and selling contact lenses in similar channels of trade, Plaintiff and “Lens.com sell essentially the same contact lens products and directly compete for customers.” Google Search Results “Google is an Internet company that owns and operates one of the world’s most utilized internet search engines.” “A search engine is a computer program that allows web users to search the World Wide Web for websites containing particular content.” When a search term is entered, the search engine compares the term “against its databases and applies a formula or algorithm to produce a search-results page that lists the websites that may relate to the user’s search terms.” Google’s search engine has a “natural or organic system that lists results in order of objective relevance to the search terms input into the search engine, with the most relevant websites appearing near the top of the web page.” In addition, the search-results page lists paid advertisements “above or to the right of the organic search results.” These paid advertisements are referred to as “sponsored links.” “Google’s AdWords program is the keyword-triggered advertising program that generates the Sponsored Links section on the search-results screen.” Advertisers bid on certain words or phrases, known as “keywords.” When a user’s search term matches an advertiser’s keyword, a sponsored link appears for that advertiser, The order and location of the sponsored link depends on the amount bid for the keyword and the quality of the advertisement. Consequently, the advertiser does not pay to be listed in a specific order on the search-results page. When bidding on a keyword, an advertiser “may specify whether keywords should be applied as a ‘broad match,’ ‘phrase match,’ ‘exact match,’ or ‘negative match.’ ” When an advertiser designates a keyword as a “broad match,” its sponsored link will appear anytime “a search is conducted for that keyword, its plural forms, its synonyms, or phrases similar to the word.” When an advertiser designates a keyword as a “phrase match,” its sponsored “link will appear when a user searches for a particular phrase,” even if the user includes other terms before or after the phrase. When an advertiser designates a keyword as an “exact match,” then its sponsored link will appear “only when the exact phrase bid on is searched on Google.” In contrast, when an advertiser designates a keyword as a “negative match,” the advertiser “ensure[s] that its link [will] not appear when certain terms are searched.” For example, a contact lens seller may specify that its link should not appear when the phrase “contact lists” is entered. Both parties in this action pay for advertisement on a “cost-per-click” basis. This means if a keyword generates a sponsored link, but the Internet user does not click on that link, the advertiser does not pay for its link appearing on the search-results page. The appearance of an advertiser’s link on a user’s computer is called an “impression.” An advertiser selects the language used in the impressions it generates. The language can be important in capturing a user’s attention so the user will click on the link to an advertiser’s website. An advertiser can gauge the success of an impression by calculating how many impressions occur in comparison to the number of clicks. It is undisputed that many more impressions occur than clicks. Impressions and Conversion Rates It also is undisputed that not every click results in a sale. When a click does result in a sale, it is called a “conversion.” According to a summary of Google AdWords Data, an impression for Plaintiffs link occurred about 99 million times between the years 2003 and 2008. Approximately 2.5 million of the impressions were generated by five keywords that are Plaintiffs mark or close variations. Approximately 2.5 million additional impressions were generated by keywords that Plaintiff contends are other variations of its mark for a total of about 5 million impressions between the two categories. The remaining 94 million impressions were generated by keywords that Plaintiff does not contend are its trademark. In particular, about 34 million impressions (about 34 percent) occurred based on the non-trademarked keywords, “Contacts; Contact Lenses; Contact Lens; contact; lenses, lens.” This means that 95 percent of the time, “1800Contaets” was not the keyword that generated the impression for Plaintiffs link. Thus, most consumers do not search for “1800Contacts” specifically when they search the Internet for a contact lens supplier. When Plaintiffs link has appeared in response to a generic or brand name keyword, 1-800 Contacts only had a conversion about 5 percent of the time. When “1800Contacts” or a variant thereof was the keyword, Plaintiff had a conversion about 23 percent of the time. This data does not establish the search term used by consumers, which may have been different from the keyword, nor the type of “matching” of the keyword. It does show, however, that Plaintiff experienced a higher conversion rate when its service mark was the keyword that generated a “1800Contacts” impression. Keywords Purchased by the Parties Both parties purchase thousands of different keywords in an effort to direct traffic to their respective websites. Defendant alone purchased 8,016 keywords that pertained to contact lenses and different brands of contacts. Among these keywords, were the following: 1 800 contact lenses; 1800 contact lenses; 800 contact lenses; 800comtacts.com; 800contacta.com; 800contavts.com; 800contaxts.com; 800contzcts.com; and 800conyacts.com. These nine keywords generated about 1,626 impressions, 25 clicks, and $20.51 in profits. Although the keywords consisted of variations and misspellings of Plaintiffs service mark, none of them are Plaintiffs actual service mark. Plaintiff has presented no evidence to show that Defendant ever purchased Plaintiffs exact service mark as a keyword. Rather, Plaintiff stated in its briefing that it “has never denied that the extent of Lens.eom’s Google purchases led to 1600 impressions in 2005.” In comparison, from about 2002 through 2008, Plaintiff purchased the following keywords from Google: 1 800 lens; 1 800 lense; 1 800 lenses; 1 800 the lens; 1 800 Lens; 1-800 lens; 1800 lenses; 18001ens; 18001enses; 1-800-lenses; 800 lens; 800 lenses; 8001ens. These keywords generated 91,768 impressions, 8,477 clicks, and about $219,314 in profits for Plaintiff. Based on the similarity of these keywords to Defendant’s service marks “1-800 Lens, com” and “1-800-GET LENS,” Defendant asserts that Plaintiff cannot claim infringement when it has engaged in the same behavior as Defendant. Affiliate Marketing Although Defendant itself has not purchased Plaintiffs specific service mark as a keyword, some of its affiliates have made such purchases. Advertisers hire person? called “affiliates” to help them with marketing. Often, the advertiser and affiliate do not have a direct relationship. Rather, a company establishes an affiliate network, and the advertiser deals directly with the company instead of the affiliate. Commission Junction is one of the largest companies that oversees an affiliate network. There are “a number of different ways” to conduct affiliate marketing. Under one way, the affiliate bids on keywords related to an advertiser’s product and develops the language for an impression. To a consumer, the impression appears “to be direct links to an advertiser’s website.” When a user clicks on that affiliate’s impression, the user is seamlessly taken through a number of websites before reaching the advertiser’s website “This process enables Commission Junction to determine which affiliate generated the ‘click,’ so that commissions can be properly paid....” Under another way, an affiliate actually establishes its own website: When a consumer clicks on an impression, the consumer is taken to the affiliate’s website, which contains links to an advertiser’s website for product purchases. At times, an affiliate’s website will contain advertisements from competing companies to present the consumer with different choices. Advertisers who use the Commission Junction network enter into a Commission Junction Access Advertiser Service Agreement (the “CJ Advertiser Agreement”). The agreement authorizes use of the advertiser’s web links, trademarks, and services marks for the purpose of promoting the advertiser. These rights are then sub-licensed to affiliates. The agreement also authorizes advertisers to terminate an affiliate who fails to comply with an advertiser’s program details or who breaches an advertiser’s intellectual property rights. The termination only precludes the affiliate from working on the advertiser’s account. It does not terminate the affiliate from the Commission Junction network. The CJ Advertiser Agreement further specifies that the parties to the agreement shall be independent contractors and nothing in the business dealings “shall be construed to make them joint venturers or partners with each other.” In turn, affiliates who join the Commission Junction network enter into a Commission Junction Publisher Service Agreement (the “CJ Affiliate Agreement”). Under this agreement, the affiliate agrees to abide by an advertiser’s program details. It agrees that none of its promotional materials will “contain objectionable content.” The affiliate further warrants that its website will not infringe another’s rights under any promotional methods. The affiliate also agrees that it “shall remain solely responsible for any and all Web sites owned and/or operated by [it] and all of [its] promotional methods.” Additionally, the CJ Affiliate Agreement specifies the parties’ relationship is “solely that of independent contractors” and does not create a partnership or joint venture. Plaintiff did not present evidence of any direct contract between Defendant and its affiliates. Defendant’s Affiliates Defendant used Commission Junction’s affiliate network to market four separate accounts: Lens.com (3,881 affiliates); JustLenses (2,683 affiliates); 1-800-GET-LENS (2,036 affiliates); and Contacts America (1,941 affiliates). Affiliates may choose to market more than one account, but each “account[] is separate and distinct.” Consequently, while some affiliates may have signed up to market more than one account, Defendant still had over 10,000 affiliate relationships. Out of this number, Plaintiff presented evidence that two of the affiliates purchased Plaintiffs service mark as a keyword in 2007. With respect to affiliate Ryan McCoy, Plaintiff contends that 550,-000 impressions of the “justlenses.com” link occurred in response “to customers searching for 1-800 Contacts” due to an employee of McCoy purchasing Plaintiffs trademark as keywords. Among others, McCoy’s employee bid on the following keywords: 1800contacts; 1800 contacts; 1800 contact; 1-800 contacts; 1-800-con-tacts; 1800 contact lens; 1800 contact lenses; 1 800 contacts.com; 1-800-eon-tacts.com. The following impressions were generated by the keywords: 1. Buy Contacts Online Simple online ordering of lenses. Compare our prices and save! www.JustLenses.com 2. 1-800 Contacts Simple online ordering of lenses. Compare our prices and save! www.JustLenses.com 3. 1800 Contacts: Buy Online Simple online ordering of lenses. Compare our prices and save! www.JustLenses.com McCoy’s employee drafted the language for the impressions. The first impression occurred about 489,000 times and resulted in 3,163 clicks. The second and third impressions, together, occurred about 65,183 times and resulted in 352 clicks (hereinafter the “Infringing Impressions”). Defendant acknowledges that the second and third impressions “present a different issue for consumers than does” the first impression. With respect to affiliate Dustin Goggan, Plaintiff contends that 240,000 impressions and 1,445 clicks occurred in response “to customers searching for 1-800 Contacts” due to Goggan purchasing variations of its trademarked as keywords. Unlike the other affiliate, none of Goggan’s impressions referred to “1800Contacts” anywhere in his advertisements. Instead, his impressions stated the following or had similar variations: LensWorld.com 75% Off Up to 75% off Retail Price! Free Shipping on Orders Over $89 www.LensWorld.com JustLenses.com Savings Up to 70% off Retail Price. Name Brand Contacts & Low Prices. www.JustLenses.com Because Lens.com’s Google purchases only amounted to about 1,600 impressions, Plaintiff acknowledges “the primary thrust of this cases involves the keyword activities of Lens.com Affiliates.” 2005 Demands to Cease Use As part of its business practice, Plaintiff conducts searches on the Internet that use its service mark or variations of it as the search term. On the search-results page, if an impression for a competitor appears, Plaintiff presumes the competitor has purchased its service mark as a keyword. On or about September 1, 2005, Plaintiffs in-house counsel sent a letter to Defendant, which alleged that Defendant was “engaged in a targeted scheme to infringe upon the 1800 CONTACTS trademark.” The letter further alleged that an advertisement for Defendant was “triggered upon a search for T800 CONTACTS’ and thus, uses the 1800 CONTACTS trademark as a triggering keyword to advertise for your directly competitive goods and services.” Plaintiff then demanded that Defendant cease (1) all infringing activities and (2) from having its advertisement appear in response to the “1800 CONTACTS” search term. Plaintiff further demanded a response within seven days to confirm Defendant would “comply with our demands.” After receiving no response, Plaintiffs outside counsel sent a letter on or about September 20, 2005 that made similar allegations. The letter demanded a response within ten days or counsel would “take appropriate action as authorized by our client.” Defendant’s counsel responded to the letter by e-mail on September 21, 2005. He stated, “We have looked into this matter and have determined that some of our affiliates appear to be involved in the problems you outlined. Upon identifying the appropriate individuals we will advise them to cease purchasing 1-800-CONTACTS from Google.” The following day, Plaintiffs counsel sent a return e-mail thanking Defendant’s counsel for discussing the matter with him that morning. He further stated, “[w]e appreciate your client’s willingness to work towards an amicable solution on this matter.” He then listed twenty terms and asked Defendant and its affiliates to implement negative matching for the specified terms. Finally, he asked for a letter from Defendant about what actions Defendant would take “to prevent this issue from arising in the future.” Plaintiff did not point to any letter to indicate Defendant complied with this request. On or about November 30, 2005, Plaintiffs outside counsel sent an e-mail to Defendant’s counsel. It informed him that Defendant’s ads were again appearing on Google and Yahoo in response to certain search terms. The e-mail then stated: “We appreciate the prompt action you have taken in the past in resolving these situations with your affiliates. We hope for a continued amicable relationship in resolving these situations.” It then asked for details about how Defendant would resolve the latest situation. A similar e-mail was sent on December 7, 2005 regarding Defendant’s ads appearing on “search.aol.com.” That same day, Defendant’s counsel replied by e-mail that he would have his “client look into your statements and see if we can determine who is doing it.” Plaintiff made no further complaints until April 2007. 2007 Demand to Cease Use In April 2007, Defendant again was notified by e-mail that impressions for its link were appearing when certain search terms were entered. This time, Plaintiffs counsel complained that Defendant’s sponsored links were appearing on Google and Yahoo when the following search terms were used: 1 800 contact, 1800contact, 800 contacts, 800contaets, l-800contacts.com, lens express, and lensexpress. Plaintiffs counsel stated in the e-mail, “[w]e recognize that your client works with an affiliate network and some of the advertisements may not be generated directly by your client. We appreciate the prompt action you have taken in the past in resolving these situations with your affiliates. We hope for a continued amicable relationship in resolving these situations.” Plaintiff attached multiple screen shots to the e-mail. Significantly, none of the screen shots was of the Infringing Impressions. Nor was any privacy report included to show from where an impression may have originated. Defendant’s counsel responded by e-mail the same day. He stated that he would “speak with my client and see if we can determine why these sponsored listings are appearing. As you know, my client has a trademark for LENS and I assume you do not expect him to take any steps to stop his links from coming up when the word lens is a search term. That issue asie [sic], we will seek to determine why the other searches trigger a sponsored link.” In August 2007, Plaintiff filed suit against Defendant because it allegedly had taken no action to correct the latest complaint. In October 2007, Commission Junction put Defendant in touch with an affiliate. Defendant informed the affiliate to implement certain negative keywords such as “1-800-Contacts.” In November 2007, Defendant sent an e-mail to Commission Junction and asked it to identify which affiliates were generating certain impressions. It also asked Commission Junction to notify those affiliates to stop bidding on certain keywords so the “offending” impressions would cease. On the same day the e-mail was sent, Commission Junction was able to identify the affiliates and inform them to cease bidding on certain keywords. The affiliates complied immediately. The affiliates who bid on the allegedly infringing keywords were McCoy’s employee and Goggan, as discussed above. Several other affiliates bid on variations of the keywords. Defendant contends that it cannot tell from a screen shot or “privacy report alone ... which affiliate in the Commission Junction network caused the sponsored link to appear.” Moreover, even if it could identify the affiliate, Defendant contends that it typically does not have access to the affiliates contact information. Commission Junction generally keeps its affiliate information confidential. Emails exchanged with Commission Junction confirm that Defendant does not have access to an affiliate’s identifying information unless the affiliate or Commission Junction allows for disclosure. Further evidence indicates that Defendant was unaware even by what network an affiliate was employed. Additionally, Defendant contends that it was unaware of what keywords affiliates bid on and that its affiliates determine the language for the impressions generated by their purchase of certain keywords. Plaintiff disputes these contentions because an advertiser can require affiliates to institute negative matching whereby they are prohibited from generating impressions based on certain keywords. Accordingly, Plaintiff contends that Defendant does not have to know each keyword its affiliates bid on, it only needs to ensure they do not bid on certain keywords. Moreover, Defendant admits that it “communicates terms for its affiliate program to Commission Junction that Lens.com uses for the engagement of affiliates for Defendant.” Defendant admits is “provides its Affiliates with a large selection of banners and textlinks to post.” ANALYSIS I. STANDARD FOR SUMMARY JUDGMENT “Summary judgment is appropriate if the pleadings, depositions, other discovery materials, and affidavits demonstrate the absence of a genuine issue of material fact and that the moving party is entitled to judgment as a matter of law.” “Once the moving party has properly supported its motion for summary judgment, the burden shifts to the nonmoving party to go beyond the pleadings and set forth specific facts showing that there is a genuine issue for trial.” “An issue is genuine ‘if the evidence is such that a reasonable jury could return a verdict for the nonmoving party.’ ” The evidence and all reasonable inferences that may be drawn therefrom are construed “in the light most favorable to the nonmovant.” With respect to trademark infringement, in the Tenth Circuit, “likelihood of confusion is a question of fact but one amenable to summary judgment in appropriate cases.” “The party alleging infringement has the burden of proving likelihood of confusion.” II. BENJAMIN EDELMAN’S DECLARATION Before discussing the evidence presented in the summary judgment motions, the court must address a motion to strike Benjamin Edelman’s declaration on the grounds that it exceeds the scope of his designation as a rebuttal expert. “Rule 26(a)(2)(C)(ii) allows the admission of rebuttal testimony that is ‘intended solely to contradict or rebut evidence on the same subject matter identified by another party.’ ” “A rebuttal expert report is not the proper place for presenting new arguments, unless presenting those arguments is substantially justified and causes no prejudice.” On October 15, 2008, Plaintiff was granted leave to' amend its complaint to add a claim for secondary liability for the purported trademark infringement of Defendant’s affiliates. Defendant then moved for expert discovery to “be re-opened for the limited purpose of addressing “affiliate marketing issues that were newly raised in Plaintiffs First Amended Complaint.” The court granted Defendant’s motion and ordered it to file an expert report no later than December 31, 2008. Plaintiff was permitted to filed a rebuttal expert report no later than March 13, 2009. Plaintiff did not ask for nor did the court grant it permission to designate a new affirmative expert. Due to an anomaly in the court’s order, Defendant was required to submit its new expert report and summary judgment briefing before Plaintiff was required to submit its rebuttal report. Thus, Defendant first became fully aware of Edelman’s testimony when Plaintiff submitted his declaration in support of Plaintiff’ motion for summary judgment. Defendant contends that Edelman’s declaration must be stricken because it is affirmative testimony rather than rebuttal testimony. Plaintiff contends the declaration properly rebuts Peter Figueredo’s expert report. Figueredo is Defendant’s expert on affiliate marketing. As a rebuttal expert, Edelman may, at most, rebut the evidence presented by Figueredo. Moreover, the evidence that Edelman may rebut is only that evidence Defendant presented in support of its summary judgment motion, rather than the entire opinion stated in Figueredo’s expert report because Defendant did not submit the report to support its motion for summary judgment. Edelman’s declaration is twenty-four pages long and its accompanying exhibits are enough to fill a three-inch binder. In contrast, Figueredo’s two declarations total seven pages. Comparing Figueredo’s declarations with Edelman’s declaration, it is clear that Edelman is offering affirmative testimony about affiliate marketing, and other subjects, rather than merely rebutting Figueredo’s testimony. Moreover, parts of Edelman’s declaration are improper in that he presents evidence not within his personal knowledge by reciting what another said in deposition and stating that testimony as fact, he opines on facts for which no expert testimony is needed, and he draws legal conclusions that are outside his role as an expert. Additionally, much of Edelman’s declaration consists of argument, which is not the proper use of an expert. Because Edelman’s declaration goes beyond the scope of the court’s order (by being an affirmative expert rather than a rebuttal expert), the court strikes all portions of his declaration that are not rebuttal testimony. Thus, only the following paragraphs of Edelman’s declaration are admissible: Paragraphs 1-2; the first two sentences of paragraph 9; the last sentence of paragraph 22; the first four sentences of paragraph 23; the first sentence of paragraph 57; and the first three sentences of paragraph 64. III. TRADEMARK INFRINGEMENT A. General Background Under the Lanham Act, “Congress recognized that every product [or service] is composed of a bundle of special characteristics and that the consumer who purchases what he believes is the same product [or service] expects to receive those special characteristics on every occasion.” Plaintiffs marks are registered as service marks. A “service mark” is “any word, name, symbol, or device, or any combination thereof ... used by a person ... to identify and distinguish the services of one person, including a unique service, from the services of others and to indicate the source of the services, even if that source is unknown.” Plaintiff is in the service of selling contact lenses made by other companies and uses its. marks to distinguish its company from other companies that are engaged in the same service. Plaintiff asserts that Defendant has violated Sections 32 and 43(a) of the Lanham Act. Section 32 prohibits “the unauthorized use of any reproduction, counterfeit, copy or colorable imitation of a registered mark in a way that is likely to cause confusion in the marketplace concerning the source of the different products” or services. Section 43(a) addresses unfair competition and claims “to enforce unregistered trademarks,” whereas Section 32 “applies only to registered trademarks.” To prove a violation under either Section 32 or Section 43(a), the plaintiff must establish “(1) [its] mark is valid and legally protectable;” (2) it is the owner of the mark; (3) the defendant has used “the mark to identify goods or services,” and (4) such use “is likely to create confusion concerning the origin of the goods or services.” Rather than focusing their arguments on the distinguishing provisions of Sections 32 and 43(a), the parties direct their arguments largely to the issues of what constitutes “use” and whether there is a “likelihood of confusion.” The court’s analysis does the same. B. Use in Commerce 1. Use of the Mark as a Keyword The “use” element of trademark infringement requires proof that Defendant used Plaintiffs service mark or a confusingly similar mark in commerce. Under the Lanham Act, a service mark is “deemed to be [a] use in commerce ... when it is used or displayed in the sale or advertising of services and the services are rendered in commerce.” This case is unusual because it presents two different types of uses: one that is invisible to consumers and another that is visible. The purchase and use of keywords is invisible to consumers. Of the courts that have addressed the issue, a split exists “on the issue of whether the purchase ... of keywords that trigger advertising constitutes the type of ‘use’ contemplated by the Lanham Act.” Because a keyword is “invisible to potential consumers,” and merely operates as a “pure machine-linking function,” some courts have concluded that it is not a use in commerce. In contrast, other courts have concluded that use of another’s mark “to trigger internet advertisements for itself,” is a use in commerce. The statutory language supports this latter conclusion. The Lanham Act does not require use and display of another’s mark for it to constitute “use in commerce.” Rather, “use in commerce” occurs when a mark is “used or displayed in the sale or advertising of services and the services are rendered in commerce.” Here, Plaintiffs service mark was used to trigger a sponsored link for purposes of advertising and selling the services of Defendant. In other words, Plaintiffs mark was used to promote Defendant’s services and to provide a consumer with a link to a website where it could make a purchase from Defendant. The court concludes such actions constitute a “use in commerce” under the Lanham Act. Clear evidence has been presented that certain Lens.com affiliates purchased Plaintiffs service mark as a keyword. Thus, the “use” requirement has been satisfied with respect to the identified Lens, com affiliates. Plaintiff has not presented evidence, however, that Defendant itself purchased Plaintiffs service mark as a keyword. Rather, Defendant purchased similar variations or misspellings of the mark, such as “1 800 contact lenses” and “800comtacts.com.” Because infringement can occur if the mark one uses is confusingly similar to another’s protected mark, if Plaintiff establishes that Defendant’s use of these variations and misspellings likely would result in consumer confusion, Defendant itself may be liable under the Lanham Act for using these variations. The court therefore addresses this issue below. 2. Use of the Mark in Advertisements The second use at issue is the use of Plaintiffs mark, or a similar variation, by a Lens.com affiliate in Internet advertisements. Approximately 65,000 impressions were generated that used Plaintiffs mark or a similar variation of it in the advertisement. Neither party disputes that such “use” falls under the Lanham Act. C. Applicable Standards for Likelihood of Confusion 1. Types of Confusion Turning to the “likelihood of confusion” element, “[t]he Lanham Act is intended ‘to protect the ability of consumers to distinguish among competing producers,’ not to prevent all unauthorized uses.” Consequently, even if a use is unauthorized, it does not constitute trademark infringement unless such use is likely to cause confusion. “Confusion occurs when consumers make an incorrect mental association between the involved commercial” service providers. Confusion also exists “when a mark is likely to deceive purchasers or users as to the source, endorsement, affiliation, or sponsorship of a [service provider].” Confusion can be (1) “direct confusion,” where a consumer believes “that the plaintiff is the source of the defendant’s products or services;” (2) “reverse confusion,” where the consumer believes “that the defendant is the source of the plaintiffs products or services;” or (3) “initial interest confusion,” where “a consumer seeks a particular trademark holder’s product [or services] and instead is lured to ... a competitor by the competitor’s use of the same or a similar mark.” With initial interest confusion, “[e]ven though the consumer eventually may realize that the product is not the one originally sought, he or she may stay with the competitor.” Under such circumstances, the competitor captures “the trademark holder’s potential visitors or customers” and makes use of the “trademark holder’s goodwill.” 2. Relevant Inquiry for Likelihood of Confusion Notably, unlike the “use” requirement, which focuses on how a holder’s mark is used by a competitor, the “likelihood of confusion” element focuses on whether “consumers viewing the mark” will make an improper mental association or be confused about origin or sponsorship. Indeed, “[w]hat is infringed is the right of the public to be free of confusion and the synonymous right of a trademark owner to control his product [or service’s] reputation.” Plaintiff contends that the purchase of its mark as a keyword satisfies this element because Defendant is capitalizing on its good will and reputation. Additionally, the keyword triggers an advertisement that either directly confuses a consumer or causes initial interest confusion due to a type of “bait and switch.” Plaintiff cites to the case of Australian Gold to support its contention. Australian Gold involved the “unauthorized resale over the internet of indoor tanning lotions.” The plaintiff called its tanning lotions “Australian Gold” and “Caribbean Gold” and had registered those terms as trademarks. The plaintiff exerted control over how and where its products were distributed. The defendants obtained the tanning lotions from corrupt distribution channels and then attempted to conceal their unauthorized sale of the products over the Internet. The defendants created seven different websites that “displayed pictures and descriptions” of the tanning lotions and used the trademarks on the site. The defendants further used the trademarks in meta tags, and purchased a preferred listing from Overture.com that guaranteed “one of Defendants’ Web sites would be among the first three listed if either of Plaintiffs trademarks was used in an internet search query.” The court concluded that these actions all attempted to capitalize on the goodwill of the plaintiff through initial interest confusion, and thus, were a violation of the Lanham Act. The facts of Australian Gold are significantly different from Defendant’s actions in this case. In Australian Gold, the defendants did not just use plaintiffs mark to generate a sponsored link. Instead, they used the mark to obtain a preferred position anytime a consumer searched for the plaintiffs trademark on the Internet. Moreover, they used the plaintiffs mark as metatags for its website and then displayed the trademarks and plaintiffs products on its websites. They did all of this through corrupt distribution channels and deceit. Notably, the court did not address whether the purchase of a trademark as a keyword alone could result in initial interest confusion. Another case Plaintiff offers to support its position is Brookfield Communications, Inc. In that case, the defendant used the plaintiffs “mark in its metatags [and] caused numerous search engines to display a link to defendant’s web site when users searched” using plaintiffs mark on the Internet. The Ninth Circuit concluded that use of plaintiffs mark in metatags did not create as much confusion as other uses of the mark. It noted, however, that web surfers were “taken by a search engine” to the defendant’s web site, and thereby could be diverted from the plaintiffs product. It therefore concluded that “defendant’s use of plaintiffs mark ... resulted in initial interest confusion because defendant was improperly benefit-ting from the goodwill plaintiff developed in its mark.” Here, Plaintiff contends Lens.com advertisements constitute a similar “bait and switch” that spawns confusion. Plaintiff asserts that whenever a Lens.com advertisement appears when a consumer enters the search term “1800Contacts,” it is akin to a consumer asking a pharmacist for Advil and the pharmacist handing the consumer Tylenol. This analogy mischaracterizes how search engines function. A more correct analogy is that when a consumer asks a pharmacist for Advil, the pharmacist directs the consumer to an aisle where the consumer is presented with any number of different pain relievers, including Tylenol. If a consumer truly wants Advil, he or she will not be confused by the fact that a bottle of Tylenol is on a shelf next to Advil because of their different appearances. This analogy is supported by case law. In J.G. Wentworth, a court questioned the Brookfield decision because of its “material mischaracterization of the operation of internet search engines.” “At no point are potential consumers ‘taken by a search engine’ to defendant’s website due to defendant’s use of plaintiffs marks in meta tages.” Instead, “a link to defendant’s website appears on the search results page as one of many choices for the potential consumer to investigate.” When the link does not incorporate a competitor’s mark “in any way discernable to internet users and potential customers,” there is “no opportunity to confuse defendant’s services, goods, advertisements, links or websites for those of’ its competitor. “Likelihood of confusion” signifies more than a mere possibility. Unless consumer confusion likely can be shown from one’s use of another’s mark, there is no infringement under the Lanham Act. The trouble with focusing on “use” over “confusion” is amply demonstrated in this case. Plaintiff monitors use of its mark by others on the Internet. It does so by entering its mark or a variation of it as a search term. If a competitor’s advertisement appears on the search-results page, it sends a cease and desist letter to the competitor to preclude the competitor’s advertisement from appearing on the same page as Plaintiff. Notably, however, ninety-five percent of the impressions for Plaintiff are triggered by non-trademarked keywords such as contacts, contacts lenses, or by brand names such as Acuvue or Focus. When a company incorporates broad matching for terms such as “contacts or contact lenses,” its sponsored link will appear even if the search term is “1800Contacts.” In other words, simply because the search term is “I800Contacts,” does not mean the keyword generating the sponsored link also was 1800Contacts or a similar variation thereof. One cannot tell from a screen shot alone what keyword generated the sponsored link. The end result, though, is that when a consumer enters “1800Contacts” as a search term, it will see a competitor’s advertisement anytime the competitor bids on “1800Contacts” “contacts” or “contact lenses” as a broad match. If the advertisement remains the same regardless of which search term triggers it, there is no more likelihood of confusion for the advertisement triggered by the trademark versus the advertisement triggered by the generic phrases. Nor is there any greater impact on the goodwill or reputation of the trademark holder It is beyond dispute that a competitor cannot be held liable for purchasing a generic keyword to trigger an advertisement that does not incorporate a holder’s mark in any way, even if that competitor’s advertisement appeared when a consumer entered a trademarked search term. Given that fact, it would be anomalous to hold a competitor liable simply because it purchased a trademarked keyword when the advertisement generated by the keyword is the exact same from a consumer’s perspective as one generated by a generic keyword. Imposing liability under such circumstances would elevate “use” over consumer confusion. As stated above, Plaintiff sends cease and desist letters anytime a competitor’s advertisement appears when Plaintiffs mark is entered as a search term. Were Plaintiff actually able to preclude competitor advertisements from appearing on a search-results page anytime its mark is entered as a search term, it would result in an anti-competitive, monopolistic protection, to which it is not entitled. Because a consumer cannot see a keyword, nor tell what keyword generated an advertisement, the court concludes that the mere purchase of a trademark as a keyword cannot alone result in consumer confusion. Accordingly, the relevant inquiry here regarding consumer confusion is not just what keyword was purchased, but what was the language of the advertisement generated by that keyword. D. Factors for Determining Likelihood of Confusion In the Tenth Circuit, the following non-exhaustive factors are considered when determining if “confusion exists between two marks:” (1) the degree of similarity between the marks; (2) the intent of the alleged infringer in adopting its mark; (3) evidence of actual confusion; (4) similarity of products and manner of marketing; (5) the degree of care likely to be exercised by purchasers; and (6) the strength or weakness of the marks. “[T]he relative importance of each individual factor will be case-specific.” If other factors are relevant, they, too, must be considered. Ultimately, the court’s role is to determine whether “the evidence as a whole” presents “sufficient proof of a likelihood of confusion to warrant a trial of the issue.” 1. Similarity of Marks “In both confusion of source and confusion of sponsorship cases, the similarity of the marks factor constitutes the heart of [the court’s] analysis.” “The degree of similarity between marks rests on sight, sound, and meaning,” with similarities being “weighed more heavily than differences.” “The similarity between two marks is an important factor ... because one’s adoption of a mark similar to a preexisting mark not only bears independently upon the likelihood of confusion, but also may support an inference that one intended to draw upon the reputation of the preexisting mark.” The “court must determine whether the allegedly infringing mark will confuse the public when singly presented, rather than when presented side by side with the protected trademark.” Although no one factor is dispositive, “[overwhelming visual dissimilarity can defeat an infringement claim, even where” other factors “weigh in favor of the plaintiff.” Here, the court must consider the degree of similarity between Plaintiffs service mark and the Lens.com advertisements appearing on the search-results page. a. Advertisements Without Plaintiffs Mark The advertisements at issue in this case fall under two groups. Those that did not use Plaintiffs mark or a similar variation in the advertisement and those that did. The relevant screen shots that Plaintiff sent to Defendant in 2007 stated the following, or were variations of the following: Lens.com Official Site — save 70% on Contacts w/ Lens.com Great Service, Huge Lens Selections. www.Lens.com. 1-800-Discount Contacts www.Lens.com Great prices. Huge selection. Free Delivery. Acuvue on Sale Now. Lens.com — Contact Lenses www.Lens.com Save 70% on Contact Lenses. Easy Ordering & Fast Delivery. Buy Contacts Online Simple online ordering of lenses. Compare our prices and save! vww.JustLenses.com The closest advertisement to Plaintiffs mark is the second one listed above. Yet, even that mark is dissimilar for both sight and sound. Moreover, it introduces the concept of a “discount,” which Plaintiffs mark does not do. The other advertisements have no reference to “1-800.” Although both Plaintiffs mark and the advertisements have “contact” or “contacts” in them, the composite view of the advertisements are overwhelmingly dissimilar for both sight and sound. The only similarity between Plaintiffs mark and the advertisements is that they all pertain to contact lenses. Because there are many providers of contact lenses, the fact that they all have the same meaning is unlikely to create consumer confusion. Moreover, the names “Lens.com” and “JustLenses” are also greatly dissimilar from “1800Contacts.” Such dissimilarities sustain an inference that Defendant did not attempt to confuse consumers or draw on the reputation of Plaintiffs preexisting mark. The court therefore concludes that this factor strongly favors Defendant for these advertisements. b. Advertisements with Plaintiff’s Mark With respect to the advertisements generated by Defendant’s affiliates, approximately 65,000 impressions were generated by the folloAving advertisements: 1-800 Contacts Simple online ordering of lenses. Compare our prices and save! www.JustLenses.com 1800 Contacts: Buy Online Simple online ordering of lenses. Compare our prices and save! www.JustLenses.com It is apparent the advertisements used Plaintiffs mark or a close variation of it. The similarity of sight, sound and meaning strongly weighs in favor of Plaintiff for the affiliate advertisements. 2. Intent to Copy “Proof that a defendant chose a mark with the intent of copying the plaintiffs mark may, standing alone, justify an inference of likelihood of confusion.” In the Tenth Circuit, courts focus on “whether defendant had the intent to derive benefit from the reputation or goodwill of plaintiff.” Moreover, “[a]ll doubts must be resolved against [the defendant].” Defendant’s advertisements all took care not to copy or refer to Plaintiffs mark, and its chosen name also does not copy or refer to Plaintiffs mark in anyway. These facts show Defendant did not intend to copy Plaintiffs mark. Moreover, Defendant itself did not purchase Plaintiffs mark as a keyword. Instead, it purchased variations of it. Nevertheless, for this particular factor, one could argue that Defendant’s purchase of the variant keywords is relevant and was done to derive benefit from Plaintiffs reputation or goodwill by generating an advertisement for Defendant. Defendant has shown, however, that any such benefit was a de minimus part of its business. Defendant purchased over 8,000 keywords, of which only nine are complained about by Plaintiff. Those nine keywords generated about 1,600 impressions out of more than 112 million impressions that have been linked to Defendant between the years 2004 and 2008. This, too, demonstrates that Defendant was not targeting its marketing efforts to ride on Plaintiffs reputation or goodwill. While all doubts must be construed against Defendant, there is insufficient evidence to create a doubt about Defendant’s actions. The court therefore concludes this factor is, at most, neutral with respect to Defendant. In contrast, a Lens.com affiliate not only purchased Plaintiffs mark as a keyword, but it copied it or a close variation thereof in its advertisements. This justifies an inference of likelihood of confusion with respect only to the affiliate’s actions. 3. Evidence of Actual Confusion “Actual confusion in the marketplace is often considered the best evidence of likelihood of confusion.” Plaintiff contends it has shown actual confusion based on a survey conducted by Carl Degen. As stated in a separate decision, the court granted Defendant’s motion to strike Degen’s consumer-confusion survey and those portions of his expert report and declarations that dealt with consumer confusion. Moreover, in deposition, Plaintiff admitted it knew of no actual case where a consumer was confused by a Lens.com advertisement appearing after a consumer entered a search for Plaintiff. Consequently, Plaintiff has presented no admissible evidence of actual confusion. This factor weighs in favor of Defendant. 4.Similarity of Products and Manner of Marketing “The greater the similarity between the products [or services], the greater the likelihood of confusion.” At times, this factor is analyzed “separately considering (1) the similarity of products and (2) the similarity in the manner of marketing the products.” Here, with respect to “similarity of products [or services],” both parties offer the same service — selling contact lenses on the Internet to the public. Moreover, both companies offer many of the same brands of lenses. Thus, there is similarity both in the products and in the services, which weighs in favor of confusion. With respect to “manner of marketing,” Plaintiff advertises extensively on television and the Internet. Defendant only advertises on the Internet. The relevant market therefore is narrowed to the Internet. On the Internet, both parties market through sponsored links. Although the sponsored links appear on the same search page, “[t]his similarity would dispel rather than cause confusion ... because the websites are separate and distinct, suggesting two completely unrelated business entities.” Nevertheless, there is sufficient similarity in marketing that this factor weighs somewhat in favor of Plaintiff. 5.Degree of Care Exercised by Purchasers ‘When consumers exercise a high degree of care in selecting services, the likelihood of confusion shrinks.” To purchase contact lenses, one must have a prescription and take care to ensure both the prescription and brand are correct. Who sells the contacts, though, may be of less importance, especially if one retailer sells the same brand for less. Thus, it is unlikely that consumers exercise a high degree of care in selecting this service. This factor weighs in favor of confusion. 6.Strength or Weakness of Plaintiff’s Mark The final factor pertains to the strength of Plaintiffs mark. “The stronger the mark, the greater the likelihood that encroachment on the mark will cause confusion.” “The categories of trademarks in ascending order of relative strength are:(l) generic; (2) descriptive; (8) suggestive; (4) arbitrary; or (5) fanciful.” “A generic name is the name of a particular class of things or a member of such a class, and it usually answers the question ‘What do you call it?’ ” Generic terms cannot receive trademark protection. In contrast, a descriptive term “describes the intended purpose, function or use of the goods.” A term may be generic in one context, but descriptive in another. For example, “contacts” is a generic term that names a particular thing, while “1800Contacts” is descriptive of the intended service of providing contact lenses. In this case, Plaintiffs mark is descriptive. “A descriptive mark may receive protection only when it has acquired a secondary meaning by becoming distinctive of the applicant’s [services] in commerce.” In other words, a descriptive mark acquires secondary meaning when the public views the mark as identifying the source of a product or service rather than just the product or service itself. Once a mark obtains incontestable status, its secondary meaning cannot be challenged. This does not mean, however, that incontestable status “dictate[s] the conclusion that the mark is strong.” “To assess the relative strength of a mark, one must consider the two aspects of strength: (1) Conceptual Strength: the placement of the mark on the distinctiveness or fanciful-suggestive-descriptive spectrum; and (2) Commercial Strength: the marketplace recognition value of the mark.” a. Conceptual Strength “A mark is strong if it is highly distinctive” meaning “the public readily accepts it as the hallmark of a particular source.” A mark can be distinctive “because it is unique, because it has been the subject of wide and intensive advertisement, or because of a combination of both.” Conceptual strength focuses on the uniqueness of the mark. The degree of use by others also may go to the mark’s conceptual strength. A strong trademark is one that is rarely used by parties other than the owners of the trademark, while a weak trademark is one that is often used by other parties. The greater the number of identical or more or less similar trademarks already in use on different kinds of goods [or services], the less is the likelihood of confusion between any two specific goods [or services] incorporating the weak mark. In this ease, Plaintiff began using its mark in the mid-1990s when the Internet had little presence and telephone orders were more common. Indeed, Plaintiff is a mnemonic to aid customers in remembering Plaintiffs telephone number. When one dials a telephone number to place an order, that number only connects to one source. Selecting its particular name in the 1990s therefore made sense. Nonetheless, the mark itself has no distinctive component. It is comprised of generic terms that only in combination moved it from a generic mark to a descriptive mark. Now, the Internet has opened a new arena for marketing. While Plaintiffs mark may have functioned well for telephone orders, it presents a problem on the Internet due to how search engines function. When searching for a particular product, one must enter that product name as a search term. Certainly, when searching for “contact lenses” on the Internet, it would not be surprising if such terms as “contacts, contact lenses, and contact lens” are among the most searched terms. Thus, it also should not be surprising that companies besides Plaintiff and Defendant use these terms in their Internet advertisements. The strength of Plaintiffs mark on the Internet is weakened by the very nature of how third parties use generic and descriptive words on search engines. Moreover, the phrase “1-800” is also used by different contact lens companies who offer customers a toll free number to call. For example, Defendant presented evidence that the following marks currently exist for other competitors: 1-800 Any Lens; Dial a Contact Lens (1800238Lens); and 1-800 New Lens. While the court recognizes that Plaintiffs mark must be viewed as a whole, rather than by its parts, this does not nullify the problem that others necessarily must use similar generic and descriptive phrases to market their product on-line or through a toll free number. Taking these facts together, the court concludes that Plaintiffs mark has weak conceptual strength. b. Commercial Strength “The commercial strength of the mark also influences the strength of a trademark.” Under the commercial-strength inquiry, one looks at the marketplace to determine if “a substantial number of present or prospective customers understand the [mark,] when used in connection with a business, to refer to a particular person or business enterprise.” Commercial strength may be obtained, in part, “because of wide and intensive advertisement.” In this case, Plaintiff has spent $220 million on advertising. From 2003 to 2008, it spent $11 million advertising on Google alone. Plaintiff also has presented evidence from a consumer awareness survey. A question on the survey asks respondents: “Which companies have you ever seen or heard of that sell contact lenses by phone, mail, or on the Internet? The first answer by a respondent is recorded. The respondent is then asked to name other companies that sell contact lenses by phone, mail, or on the Internet. In 2008, forty percent of the respondents who wore contact lenses mentioned Plaintiff first. In contrast, only about one percent of respondents listed the next closest competitor. While the survey provides evidence that the name “1800Contacts” has marketplace recognition, it is not without its flaws. Because the survey questions asked about “phone,” “mail,” and “Internet” together, the survey does not disclose how many respondents recognize Plaintiff as a Internet retailer. Consequently, the degree of recognition that Plaintiff has obtained on the Internet versus other marketing channels is unknowable from the survey. Separate evidence indicates, however, that Plaintiffs profits from the Internet have been increasing over the years, to the point that they now exceed Plaintiffs other marketing channels. This shows an Internet presence. A second problem with the survey results from how questions were asked versus how they were recorded. The survey asked an open-ended question about which companies a respondent had heard sold contacts by phone, mail, or the Internet. Yet, the person recording the answer had to fit the answer into a category from a close-ended list. Since the survey was not double-blind, this survey design may have led to unintended interviewer bias. Respondents do not always provide a clear and precise answer. Instead, people may “say, oh, I don’t know, it’s a 1-800 number, or they say, oh it’s got — -you know, it’s contact something.” Because these answers do not fit cleanly within the close-ended list of possible responses, an interviewer, in a non-double blind study, may be more apt to record it as the desired answer of “1800Contaets.” This weakness in the survey design lessens its probative value. Moreover, the survey results are somewhat marginal. Courts have found that consumer awareness exceeding fifty percent provides good evidence while “a recognition figure of thirty-eight percent” provides only marginal evidence. Here, forty percent of survey respondents who wore contact lenses demonstrated market awareness of “1800Contacts.” Although this figure is closer to marginal evidence, it is important to note that it was derived from an open-ended question that did not suggest the answer, and it was significantly higher than the next closest competitor. Additionally, Plaintiff has presented evidence that between the years 2003 and 2008 about 2.5 million impressions were generated on the Internet specifically matching the keyword “1800Contacts” or a close variation. This, too, shows some market recognition of Plaintiff. The number is tempered by the fact that it only represents about two-and-a-half percent of the total impressions for Plaintiff. Thus, while the survey, advertising expenditures, Internet profits, number of impressions, and the mark’s incontestable status all present evidence of the mark’s commercial strength, the evidence is weakened by other factors. This, combined with the mark’s weak conceptual strength, indicates that Plaintiffs mark is only moderately strong. c. Applicability to the Parties As stated above, the stronger the mark, the more likely it is that encroachment on the mark will cause confusion. “A strong trademark is, by definition, a trademark that triggers an immediate association with one particular source, and that association carries over to the same mark or a similar one used on other goods or services.” Thus, while strength of the mark may lead to confusion when the same or similar mark is used on other goods or services, the inverse appears true when a competitor’s mark is dissimilar. For example, Coca-cola is a strong brand. If a competitor were to impose the name Coca-cola on its bottle but use a color for its label other than red and white, a consumer still may be confused as to source becau