Hasbro vs. Internet Entertainment Group "CANDYLAND Case"
1996 U.S. Dist. LEXIS 11626 (W.D.Wa. 1996)
INTERNET ENTERTAINMENT GROUP, LTD., et al., Defendants.
1996 U.S. Dist. LEXIS 11626 (W.D. Wa. 1996)
1. On February 5, 1996, the application of plaintiff Hasbro, Inc. ("Hasbro") for a temporary restraining order came on for hearing by the court. Plaintiff appeared through Kenneth B. Wilson and Lisa G. Meckfessel of the law firm of Wilson, Sonsini, Goodrich & Rosati, and Jill D. Bowman of the law firm of Stoel Rives LLP. Defendants Internet Entertainment Group, Ltd., Brian Cartmell and Internet Entertainment Group, Inc. appeared through John D. Lowery and E. Russell Tarleton of the law firm of Graham & James LLP/Riddell Williams P.S. After the oral decision was announced, the parties agreed that the ruling should be entered on a preliminary injunction rather than merely as a temporary restraining order.
2. Having considered all papers submitted in support of said motion and in opposition thereto, and having heard oral argument in open court, the court finds that:
3. Hasbro is the owner of the trademark "CANDY LAND," which has been registered on the Principal Register of the United States Patent and Trademark Office since 1951,
4. Hasbro has demonstrated a probability of proving that defendants Internet Entertainment Group, Ltd., Brian Cartmell and Internet Entertainment Group, Inc. (collectively referred to as "defendants") have been diluting the value of Hasbro's CANDY LAND mark by using the name CANDYLAND to identify a sexually explicit Internet site, and by using the name string "candyland.com" as an Internet domain name which, when typed into an Internet-connected computer, provides Internet users with access to that site.
5. Hasbro has demonstrated a likelihood of prevailing on its claims that defendants conduct violates the federal trademark anti-dilution statute, 15 U.S.C. @ 1125(c), and the Washington State trademark anti-dilution statute, RCW 19.77.160.
6. Hasbro has shown that defendants' use of the CANDY LAND name and the domain name candyland.com in connection with their Internet site is causing irreparable injury to Hasbro.
7. The probable harm to Hasbro from defendants' conduct outweighs any inconvenience that defendants will experience if they are required to stop using the CANDYLAND name.
8. The public interest favors entry of a preliminary injunction on the facts of this case.
9. THEREFORE, IT IS HEREBY ORDERED that Hasbro's motion for preliminary injunction is granted. Defendants Internet Entertainment Group, Ltd., Brian Cartmell, and Internet Entertainment Group, Inc., and their officers, agents, servants, employees and attorneys, and those persons in active concert and participation with defendants who receive actual notice of this preliminary injunction, are enjoined from directly or indirectly using the name CANDYLAND or the Internet domain name "candyland.com," or any similar name which is likely to dilute the value of Hasbro's CANDYLAND mark, in connection with the advertising, operation or maintenance of any Internet site, including but not limited to any Internet site containing sexually explicit material or other pornographic content. Defendants are directed to immediately make affirmative efforts to stop, cancel or discontinue any previously purchased advertising which refers to the name CANDY LAND or the Internet domain name "candyland.com."
10. IT IS FURTHER ORDERED that defendants shall immediately remove all content from the "candyland.com" site. However, defendants shall be allowed to post a "referral notice" at the URL address "http:/www.candyland.com" until May 5, 1996, which shall provide the new location of defendants' Internet site. The referral notice shall not contain any hyperlink to defendants' new site or sites, or to any other site. After the expiration of the 90 day referral period, defendants must remove the referral notice and thereafter discontinue any use, either direct or indirect, of the name domain name "candyland.com."
11. IT IS FURTHER ORDERED that Hasbro shall not be required to post a bond pursuant to Federal Rule of Civil Procedure 65(c) in connection with this preliminary injunction, as defendants expressly waived any bond requirement relating to this order at the preliminary injunction hearing.
12. The clerk is directed to send copies of this order to all counsel of record.