Toys "R" Us, Inc. v. Feinberg, 26 F.Supp.2d 639 (S.D.N.Y. 1998) (full-text), vacated, 1999 U.S. App. LEXIS 29833 (2d Cir. Nov. 10, 1999).
Factual Background Edit
Defendant used the domain name “gunsareus.com” for a website promoting his firearms store. Plaintiff Toys “R” Us sought to enjoin defendant’s use of the domain name alleging trademark infringement, unfair competition, and dilution. (Defendant had previously used the names “Guns are Us” and “Guns Are We” to identify his firearms store and website, but plaintiff had ceased these uses in response to plaintiff’s objections.)
Trial Court Proceedings Edit
The district court held that confusion was unlikely, in part because defendant did not use plaintiff’s trademark “R” in the domain name, but rather used the word “are.” Plaintiff’s claim for dilution by blurring was rejected because defendant made no use of the single letter “R” or any distinctive lettering or coloring in a manner similar to plaintiff’s famous mark. Unlike plaintiff’s mark, defendant’s domain name contained lowercase letters with no spaces between the words. The court held that, as a matter of law, defendant’s use of the domain name “gunsareus.com,” without naming the website “Guns ‘R’ Us” or “Guns Are Us,” will not blur the distinctiveness of plaintiff’s mark.
In rejecting plaintiff’s claim for dilution by tarnishment, the court noted that the absence of the single letter “R” diminished the likelihood that one would associate defendant’s domain name with plaintiff. It also emphasized the fact that defendant was a small, unincorporated gun dealer who directed his sales efforts towards firearms dealers. The court denied plaintiff’s motion for summary judgment, granted defendant’s motion for summary judgment, and dismissed plaintiff’s complaint.
Appellate Court Proceedings Edit
In an unpublished summary order, the Second Circuit vacated the district court’s grant of summary judgment for defendant, citing two procedural problems. First, the district court failed to give plaintiff notice that it was considering a sua sponte entry of summary judgment against it, thus depriving plaintiff of the opportunity to submit evidence and arguments in opposition. Second, the district court failed to draw all reasonable inferences in favor of plaintiff before granting summary judgment in defendant’s favor. In remanding the case, the Second Circuit directed the district court to evaluate plaintiff’s dilution claims under the distinctiveness standards it recently articulated in Nabisco v. PF Brands.
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