Internet Trademark Case Summaries

Hasbro, Inc. v. Clue Computing, Inc.

66 F. Supp. 2d 117 (D. Mass. 1999), aff'd, 232 F.3d 1 (1st Cir. 2000)

Clue Computing (“Clue”) registered the domain name “clue.com,” which it used in connection with a website offering information about its computer-consulting business. Hasbro, owner of the federally registered mark CLUE for its board game, sued Clue, alleging trademark infringement and dilution. The court had previously dismissed Clue’s motion to dismiss for lack of personal jurisdiction. 994 F. Supp. 34. The court here granted summary judgment for Clue on Hasbro’s trademark-infringement claim and, sitting as a fact finder, ruled for Clue on Hasbro’s federal and state dilution claims. As to trademark infringement, the court found that confusion was unlikely as a matter of law. Notably, in its discussion of the “actual confusion” factor, the court rejected the notion that the initial-interest confusion caused by Clue’s use of the “clue.com” domain name was actionable under trademark law. Refusing to follow several Ninth Circuit cases recognizing the doctrine, the court stated that the inconvenience of searching for Hasbro’s CLUE website was not sufficient to constitute actual confusion. In rejecting Hasbro’s federal and state dilution claims, the court held that Hasbro failed to demonstrate that CLUE was a famous mark. The court nonetheless examined whether Clue’s use of the “clue.com” domain name diluted Hasbro’s CLUE mark. Finding that defendant had a legitimate competing use of “clue.com,” the court rejected Hasbro’s argument that the mere act of registering the domain name was per se dilution. It then held that Hasbro failed to establish that Clue’s use of the domain name actually diluted the distinctiveness of the CLUE mark, refusing to grant Hasbro “a nationwide monopoly in the use of this rather common word” against others legitimately using it in other contexts.

The First Circuit affirmed the district court's holdings on both the infringement and dilution claims with little discussion. In fact, the First Circuit "generally adopt[ed] the district court's analysis." But it declined to take a position on whether a retroactive application of the federal dilution statute was proper. Because the lower court correctly held that Hasbro's CLUE mark was not famous, the issue of retroactivity did not affect the outcome.