Case No. 00-C-1391


This matter came before the court on December 8 and December 11, 2000, on the plaintiff's motion for preliminary injunction. Based upon the testimony taken, exhibits entered, submissions made, arguments of counsel, and the file in this matter, the court finds as follows.

1. Plaintiff, Referee Enterprises, Inc., (hereinafter "Referee Enterprises"), a Wisconsin corporation, brings this action under the Trademark Laws of the United States, and, more particularly, under the Lanham Act §32 and 43(a) (1), (c) and (d) (15 U.S.C. §1114 and 1125 (a)(1), (c) and (d).

2. The complaint alleges that the defendants are infringing plaintiff's registered trademark, REFEREE®, with the extensions .com .org and .net with regard to the domain names. The plaintiff charges further that defendants' use of these domain names is likely to cause confusion or mistake or to deceive the public as to the affiliation, connection or association of defendants with plaintiff, Referee Enterprises as well as the origin, sponsorship or approval of defendants' goods, services and activities under the Lanham Act.

3. The complaint adds that the defendants are using and thereby infringing the plaintiff's rights so as to cause confusion, mistake or deception to the public as to the origin, sponsorship or approval of defendants' goods and services under the Lanham Act as well as actual false designation of goods and services and dilution of plaintiff's Referee® mark under the Lanham Act.

At this stage of the proceedings, it appears that jurisdiction is conferred on this court pursuant to Lanham Act §39(a) (15 U.S.C. §1121(a)) and 28 U.S.C. § §1338(a) and (b). Furthermore, its appears to the court that defendant Planet Ref, Inc., (hereinafter "PRI") is a Texas corporation with its principal place of business at 101 Windmill Road, San Antonio, Texas 78231, and the defendant Right Sports, Inc., (hereinafter "RSI") is also a Texas corporation with its principal place of business at 16034 Luxembourg Drive, Houston, Texas 77070-2073.

4. The proofs submitted to this court as well as the acknowledgements of defendants in their pleadings and at the hearing on this matter satisfy the court that plaintiff is likely to succeed on the merits of this action and prove one or more of its claims against one or both of the defendants. This includes establishing that the plaintiff, Referee Enterprises, adopted the REFEREE trademark for a new publication, REFEREE® Magazine, and has used the mark on such magazine and in connection with providing related news and information services in interstate commerce continuously since 1975. Furthermore the plaintiff is likely to establish that it is threatened with dilution, trademark infringement, unfair competition and false designation of origin by defendants' use one or more domain names and logos, including referee.com, referee.org. referee.net and Whistle/Stripes Logo® Trademark appearing in the plaintiff's magazine.

The plaintiff has no adequate remedy at law with respect to the defendants' actions, the balance of harm weighs in favor of the plaintiff and a preliminary injunction is in the public interest for multiple reasons, including confusion and false designation or origin.

Now, therefore,

IT IS ORDERED as follows:

1. Defendants, their officers, agents, sales representatives, servants, employees, associates, attorneys, successors and assigns, and all persons acting by, through, under, or in active concert or participation with any of them, are preliminary enjoined from:

A. Using the mark REFEREE or any other mark confusingly similar to Referee Enterprise's REFEREE trademark, either alone or in combination with other words, specifically including, but not limited to: eReferee, ereferee.com, ereferee.net, ereferee.org, refereecamp.com, refereecamps.com, refereeclinics.com, refereeforum.com, refereeinsurance.com, refreemail.com and refereeresume.com; as a mark, domain name or highlighted term or in any way other than in common textual reference, any other mark or second-level domain name including the term "referee" in any form;

B. Using the mark imitation Whittle/Stripes logo or any other mark confusingly similar to Referee Enterprises's Whistle/Stripes Logo® trademark;

C. Selling, offering for sale, advertising, promoting, importing or exporting any goods bearing the infringing mark Referee, the imitation Whistle/Stripes mark, or any other mark confusingly similar to the REFEREE® trademark or the Whistle/Stripes Logo® trademark;

D. Using the word "Referee," or any other term likely to cause confusion with the REFEREE® trademark, as any of defendants' domain names, directory names, or other such computer addresses, or otherwise in connection with the retrieval of date or information;

E. Engaging in any other acts or conduct which would cause consumers to erroneously believe that any of the defendants' goods or services are somehow sponsored by, authorized by, licensed by, or in any way associated with, Referee Enterprises; or

F. Otherwise infringing rights in Referee Enterprises's REFEREE® trademark, Whistle/Stripes Logo® trademark, or competing unfairly with Referee Enterprises.

Dated at Milwaukee, Wisconsin, this 24th day of January, 2001.


U.S. District Judge

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