Designer Skin LLC v. S & L Vitamins, Inc., et al.
Toys "R" Us, Inc., et al. v. Mohamad Ahmad Akkaoui, d/b/a Adults "R" Us, et al.
1996 U.S. Dist. Lexis 17090 (N.D. Cal. October 29, 1996)
Defendants operated websites at domain names containing the phrase "adultsrsus" at which they sold a variety of sexual devices and clothing. Plaintiffs, owner of federal trademarks in "Toys R Us" and numerous other marks ending in the phrase "R Us" commenced this suit seeking to enjoin defendants' further use of "adultsrus". Such use, plaintiffs contended, constituted trademark dilution and infringement, false designation of origin and unfair competition.
Finding that defendants' actions constituted impermissible trademark dilution, the court issued an injunction, enjoining defendants from further use of "adultsrus" in their domain name and, inter alia, directing defendants to cancel their domain name registration of such names, and to notify all search engines to delete their domain names therefrom.
The court, in issuing such relief, found that defendants' conduct had ran afoul of the Federal Trademark Dilution Act, 15 U.S.C §1125(c)(1). This act entitled an owner of a famous trademark to an injunction enjoining anothers commercial use of the mark, "if such begins after the mark has become famous and causes dilution of the distinctive quality of the mark."
The court concluded that the "Toys R Us" mark was famous. Further, defendants' conduct diluted the plaintiffs' "R Us" family of marks because "'Adults R Us' tarnishes the 'R Us' family of marks by associating them with a line of sexual products that are inconsistent with the image Toys "R" Us has striven to maintain for itself." Irreparable injury was also established by such a showing. "Because plaintiffs have established the likelihood that "Adults R Us" dilutes their trademarks, they have also established that they will likely suffer irreparable injury ... ". Given the statute's dictates that neither consumer confusion nor competition between the parties need be shown to establish a dilution claim (15 U.S.C. §1127), the court directed that an injunction issue.
The full text of the court's decision can be found on a web site maintained by the Berkman Center for Internet & Society at the Harvard Law School.