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Internet Trademark Case Summaries

Toys “R” Us, Inc. v. Abir

45 U.S.P.Q.2d 1944 (S.D.N.Y. 1997) (preliminary injunction decision), 1997 U.S. Dist. LEXIS 22435 (S.D.N.Y. Dec. 31, 1997) (order granting preliminary injunction), (S.D.N.Y. Aug. 27, 1998) (order granting summary judgment), 1999 U.S. Dist. LEXIS 1275 (S.D.N.Y. Feb. 10, 1999) (costs/fees proceeding)

Defendants registered the domain name “,” and offered to sell it to plaintiffs, owners of the famous TOYS “R” US toy-store chain and many federal registrations for trademarks incorporating the term “R” US.  Defendant sent two facsimiles to plaintiffs, the first chastising plaintiffs for their foolishness in not registering the “” domain name and advising them that he would establish his own toy catalog at the site if they did not purchase the name from him.  In the second letter, defendant informed plaintiffs that he had contacted Chinese toy companies and would commence negotiations with them for the name unless plaintiffs responded to his offer.  Plaintiffs alleged that defendant’s activities infringed and diluted their trademark rights.  The court agreed and issued a preliminary injunction prohibiting defendant from using the “” domain name and any “R” US mark in any medium, including in hidden text on websites.  Because defendant had admitted intentionally copying plaintiffs’ trademark, likelihood of confusion was presumed as a matter of law.  The court also found confusion likely under a traditional examination of the likelihood of confusion factors.  Regarding plaintiffs’ dilution claim, the court found defendant’s activities lessened the capacity of plaintiffs to identify and distinguish their goods and services.  The court also found defendant’s uses of the domain name—namely to solicit business from Chinese toy companies and to extort money from plaintiffs—were both commercial uses of the mark in commerce.

On August 27, 1998, the court granted summary judgment on plaintiffs’ dilution claims (plaintiffs withdrew their infringement claims).  It permanently enjoined defendant from using plaintiffs’ marks in any manner and ordered the transfer of the “” and “” domain names to plaintiffs.  The court also required defendant to take assorted affirmative actions, including contacting all publishers of directories in which their names appear, including Internet search engines and the Yahoo! directory, to request deletion of all references to the domain names and all “cache memory” referencing such names.  Finally, finding defendant’s conduct to be deliberate, willful, and in bad faith, the court deemed the case “exceptional” and awarded plaintiffs’ request for attorney’s fees.  On February 10, 1999, the court granted plaintiffs’ motion for attorney’s fees in the amount of $55,162.76.  Defendant failed to establish an alleged inability to pay, and its request for reduction of the award was denied.