Toys “R”

Plaintiffs move for a preliminary injunction enjoining Defendants from using the name "Adults R Us" or any colorable variation on Plaintiffs' Toys "R" Us trademark. Plaintiffs also request an award for costs and attorneys' fees. Defendants oppose the motions. The matter was heard on October 11, 1996. Having considered all of the papers filed by the parties and oral argument on the motion, the Court GRANTS Plaintiffs' motion for a preliminary injunction and DENIES as premature Plaintiffs' request for costs and attorneys' fees.

BACKGROUND

Plaintiffs Toys "R" Us and Geoffrey, Inc. seek a preliminary injunction against Defendants Mohamad Ahmad Akkaoui, Lingerienet, and Acme Distributors, all doing business as Adults "R" Us, for trademark dilution and infringement. Plaintiffs hold an array of trademarks ending with the phrase "R Us." On August 28, 1996, they learned that Defendants were operating an Internet site and shopping service featuring a variety of sexual devices and clothing under the name "adultsrus." On September 13, 1996, Plaintiffs sent a letter to Defendants demanding that they immediately shut down their Internet site. On September 17, 1996, Defendants' attorney notified Plaintiffs' San Francisco counsel that it would be impossible to comply with Plaintiffs' demands and that he regarded Plaintiffs' legal theory to be weak. On September 25, 1996, Plaintiffs filed suit in U.S. District Court alleging trademark dilution, trademark infringement, false designation of origin, and unfair competition. They also sought a preliminary injunction to enjoin Defendants on the basis of trademark dilution and infringement.

On October 2, 1996, Defendants filed an objection to Plaintiffs' motion. Defendants argued that because they had stopped using names such as "Adults R Us" by October 1, 1996, there was no longer any activity to enjoin. Plaintiffs replied, however, that as of October 4, 1996, sites identified as "Adults R Us" could still be found on the Internet. Most of these sites were no longer linked to Defendants' catalogue of sexual products, but some were. Plaintiffs therefore persist in their request that this Court issue a preliminary injunction, both to ensure a more complete removal of the name "Adults R Us" from the Internet and to prevent Defendants from infringing or diluting Plaintiffs' trademarks again in the future. Plaintiffs also seek attorneys' fees and costs.

DISCUSSION

A. Legal Standard for Preliminary Injunction

Upon a motion for a preliminary injunction, this Court must consider four factors:

(1) the likelihood of the moving party's success on the merits;

(2) the possibility of irreparable injury to the moving party if relief is not granted;

(3) the extent to which the balance of hardships favors the respective parties; and

(4) in certain cases, whether the public interest will be advanced by granting the preliminary relief.

Miller v. California Pacific Medical Ctr., 19 F.3d 449, 456 (9th Cir.1994) (en banc ). The moving party is entitled to preliminary injunction if it establishes either:

(1) a combination of probable success on the merits and the possibility of irreparable harm, or

(2) the existence of serious questions going to the merits, the balance of hardships tipping sharply in its favor, and at least ...