Designer Skin LLC v. S & L Vitamins, Inc., et al.
Avlon Industries v. Robinson
2005 WL 331561 (N.D. Ill., Feb. 8, 2005)
Court holds that defendant’s use of plaintiff’s famous mark, and 15 variants thereof, in domain names that take consumers to a website at which both plaintiff’s products and those of its competitors are sold, dilutes plaintiff’s mark. As a result, the Court grants plaintiff’s motion for summary judgment on its claim for trademark dilution in violation of the Lanham Act.
Plaintiff Avlon Industries (“Avlon”) is the registered owner of a number of trademarks for hair care products sold principally to African-Americans, including KeraCare and Affirm. Avlon registered its KeraCare mark in 1991, and has sold millions of dollars of KeraCare hair products annually.
Defendant Arthur Robinson (“Robinson”), who does business as ‘Sheldeez Hair Products and Salon,’ operates a website at the domain sheldeez.com where he sells hair care products, including both those of the plaintiff and its competitors. To attract customers to his website, defendant registered at least 15 domain names which contain plaintiff’s mark and variants thereof, including keracare.com, kerecare.com, keracarehair.com and kerecare.net. Each of these 15 domains redirect consumers to defendant’s sheldeez.com website. Defendant is not affiliated with plaintiff, nor does he have permission to use its trademark in this manner.
Claiming that defendant was wrongfully using its trademark to lure customers to his site, plaintiff commenced this suit, asserting that defendant’s acts diluted its trademark in violation of the Federal trademark dilution act. The Court agreed, and granted plaintiff summary judgment.
To establish a trademark dilution claim, a mark holder must establish that (1) its marks are famous (2) defendant’s use of the mark began after the became famous (3) defendant’s use ‘causes dilution’ of plaintiff’s marks and (4) defendant’s use is commercial and in commerce.
The Court found that plaintiff’s KeraCare mark was famous. In reaching this result, the court relied both on the evidence of extended use and sales discussed above, as well as on the fact that defendant registered 15 variants of plaintiff’s mark as domain names. Said the Court:
The Court also found that defendant’s use of plaintiff’s mark causes dilution. By using plaintiff’s marks in its domain name, defendant prevented plaintiff from using its own marks to identify its own website. These registrations also gave defendant control of the messages and goods associated with Avlon’s mark. Evidence of actual dilution was not necessary because defendant had used plaintiff’s exact mark. Said the Court “Robinson’s control of all the possible variants of Avlon’s marks on the internet, prevents Avlon from using its marks to identify its goods and thus dilutes the marks.”
Because this use commenced after the marks became famous, and was in commerce, plaintiff was entitled to summary judgment on its dilution claim.