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Internet Trademark Case Summaries

Ty, Inc. v. Agnes M. Ltd.

2001 US. Dist. LEXIS 18852 (N.D. Ill. Nov. 13, 2001)

Defendant, an Internet dealer in bean-bag toys, registered the domain name “beaniebabes.com” and linked that name to various internal pages at her “bhome.com” website.  That site promoted her physical store, The Bean Bag Store, and also sold plaintiff’s BEANIE BABIES toys and non-plaintiff sponsored or affiliated WEE BABIES, BACK PACKIES, BEANIE BABIES BELTS, BEANIE BABIES BACKPACKS, STRING A BEANIE’S, and BEANIE FASHIONS.  Defendant prominently displayed plaintiff’s BEANIE BABIES logo on her “beaniebabes.com” website and linked her site to internal pages of plaintiff’s “beaniebabies.com” website.  Plaintiff moved for summary judgment on its Lanham Act claims of trademark infringement, unfair competition, dilution, and its Illinois deceptive-trade-practices claim.  The court denied summary judgment on plaintiff’s trademark infringement, unfair competition, and deceptive-practices claims because a genuine issue of material fact existed on the issue of likelihood of confusion.  Despite most of the likelihood-of-confusion factors weighing in favor of plaintiff, the court declined to grant summary judgment because “determining likelihood of confusion is so fact intensive and reasonable minds can differ.”  However, the court granted plaintiff’s motion for summary judgment on its dilution claim, holding that defendant’s actions lessened the capacity of BEANIE family of marks to solely identify plaintiff.  Defendant argued that plaintiff’s trademarks were not famous by the time she began using the “beaniebabes.com” domain name because plaintiff had been using the marks for only eight years.  According to the court, however, there was no arbitrary minimum amount of time for proving fame; the duration-of-use factor, by itself, was not determinative of fame.  The court had no problem finding that plaintiff’s marks became famous in a relatively short period of time because of the massive publicity that the marks received in wake of its substantial commercial success.  Defendant also unsuccessfully argued that its use of the “beaniebabies.com” domain name constituted “fair use” and not “commercial use” under the FTDA, relying on Playboy Enterprises v. Welles.  Unlike the defendant in the Welles cases, who made only minimal use of the plaintiff’s trademark and made no attempt into leading consumers into believing they were viewing a site sponsored by the plaintiff, defendant here purposely selected a domain name “as close as possible” to plaintiff’s name, displayed plaintiff’s BEANIE BABIES logo on its website, and linked her website to plaintiff’s.  Finally, the court rejected defendant’s argument that the first-sale doctrine barred plaintiff’s claims because the doctrine did not apply to purposely deceptive conduct, and there were genuine issues of fact of whether defendant’s actions were deceptive or confusing.