## Facts

- TCPIP operated a chain of children’s clothing stores under the registered mark “The Children’s Place,” used for roughly 30 years, with substantial growth in stores and sales during the 1990s.
- TCPIP registered and used domain names including “tcpkids.com” and “childrensplace.com” for online sales.
- Haar Communications Inc. and its president/sole employee, Richard S. Haar, planned a child-related internet portal and registered “thechildrensplace.com,” then registered 80 additional domain names consisting of variations on “The Children’s Place.”
- After TCPIP demanded that Haar stop using the domains, Haar refused and offered to sell the domain names to TCPIP for high prices.
- TCPIP sued alleging dilution under the Federal Trademark Dilution Act (FTDA) and infringement under Lanham Act § 43(a), and sought a preliminary injunction covering all 81 domains.
- The district court granted a preliminary injunction based on likely dilution and likely infringement; Haar appealed.

## Issues

1. Whether “The Children’s Place” was eligible for FTDA dilution protection, including whether the mark was inherently distinctive and “famous.”
2. Whether, under Lanham Act § 43(a), Haar’s 81 domain names were likely to cause consumer confusion so as to justify enjoining some or all of them.

## Decision

- The court vacated the preliminary injunction to the extent it rested on the FTDA, holding the mark was descriptive, lacked inherent distinctiveness, and was not shown to be “famous” as required for dilution protection.
- The court affirmed in part and vacated in part the preliminary injunction under Lanham Act § 43(a).
- The court held that certain domain names closely tracking the mark were confusingly similar and could be enjoined, but other names were sufficiently different—particularly given the mark’s weak, descriptive character—to preclude a finding of likely confusion at the preliminary stage.
- The case was remanded for the district court to reassess which specific domain names should remain enjoined under the likelihood-of-confusion analysis.

## Legal Principles

- FTDA dilution protection, as applied here, requires a mark that is both inherently distinctive and “famous”; descriptive marks lacking inherent distinctiveness are not eligible, and commercial success within a sector does not alone establish fame.
- Likelihood of confusion under Lanham Act § 43(a) is assessed under the Polaroid factors, including the mark’s strength, similarity, proximity, and evidence of bad faith.
- In domain-name disputes, bad-faith registration patterns and attempts to sell domains to the trademark owner may weigh strongly toward likely confusion for close variants.
- Injunctive relief must be tailored: enjoining all remotely similar domain names is improper where some variants are sufficiently dissimilar and the plaintiff’s mark is weak.

## Conclusion

The Second Circuit rejected dilution relief because “The Children’s Place” was descriptive and not proven famous, and it narrowed the domain-name injunction to only those registrations likely to cause confusion, requiring a domain-by-domain assessment on remand.


TCPIP Holding Co. v. Haar Commc’ns Inc., 244 F.3d 88 (2d Cir. 2001)