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PerfumeBay is confused with eBay???

Discussion in 'Domain Name Disputes' started by Nikki, Apr 21, 2008.

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  1. Nikki

    Nikki Member

    May 2007
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    I really disappoint with the judge. Are you confused by these domain names? I don't think so.

    here it is, for education only......

    An online fragrances retailer may continue to use the name “Perfume Bay,” but any other versions without the space between the words infringe the online auctioneer eBay's famous trade mark, the 9th Circuit has ruled.

    The dispute began when tried to register “perfumebay” with the US Patent and Trademark Office in 1999. The company agreed to suspend the registration and negotiate with eBay when the online auction giant opposed the application.

    When negotiations broke down Perfumebay sued eBay in the US District Court for the Central District of California, seeking a declaratory judgment of non-infringement of trade mark.

    But eBay countersued for trade mark infringement and dilution under the Lanham Act, 15 USC §1114, claiming “PerfumeBay” was confusingly similar to “eBay”. It sought an injunction against further use of “Perfumebay” in any form. At trial US District Judge William D. Keller permanently enjoined use of the conjoined “Perfumebay”, ruling that it was likely to be confused with eBay. He *C.T.L.R. N32 allowed the fragrance seller to continue to use the non-conjoined “Perfume Bay”. Both sides appealed.

    Perfumebay told the US Court of Appeals for the 9th Circuit that its mark was not similar to eBay's at all, and therefore it should have prevailed. The company also said the judge failed to consider the hardship it will suffer. Since there is no way to use a non-conjoined word in a website domain name, the ruling will forever bar use of or, it argued.

    According to eBay, the trial judge was wrong to allow even the use of the non-conjoined name because that form of the name is still likely to confuse consumers.

    The appellate court upheld both of Judge Keller's rulings. It agreed that the similarity of the names, plus the fact that both firms sell fragrances, made confusion and false associations likely.

    The panel turned aside Perfumebay's argument that the trial court failed to consider the hardship caused by losing two of its domain names. The appellate panel noted that Perfumebay has several other non-infringing domain names at its disposal.

    As to eBay, the 9th Circuit rejected the company's contention that the non-conjoined form still infringed its trade mark. The panel said “Perfume Bay” did not resemble “eBay” in the same way that “Perfumebay” did, so Judge Keller was correct to rule that no likelihood of confusion existed. The appeals court said:

    “The District Court's injunction maintained an equitable balance with respect to the disputed marks. The conjoined forms encompass all of eBay's trademark, thus creating confusion when utilized in domain names, online advertising and search engine results.”
    C.T.L.R. 2008, 14(2), N31-32
  2. Domain Forum

    Acorn Domains Elite Member

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  3. Takwa United Kingdom

    Takwa Well-Known Member

    Jul 2007
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    Looks Like Ebay got whole of the legal rights for the word "Bay" doesn't it?
  4. itrends

    itrends Active Member

    May 2008
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    Ebay do this to any domain with bay in it. You can fight them most the time as long as you are not just doing auctions and dont use yellow! ;)

    Was a great thread on another domain talk forum but not sure if I can mention other forums in here... so better to just search google for something like "ebay domains bay notice" or something.
  5. landlord

    landlord Active Member

    Oct 2007
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    Whats on the website

    As I have read before part of the issue lies in the website content....the domain name is only part of the issue...

    If on the website the Trade Mark was clearly evident as Perfume Bay and the site wasnt confusingly similar to ebay ie. an auction shop or similar then that possible initial confusion is lost in a split second and given the 'balance' trying to be applied by the judge then any confusion is likely to be insignificant....judges need to balance things better given that the web usersis fully in control....Judges need to be aware that users will find the site they are looking with a few clicks....

    Given that Perfum ebay has no contextual value (mispelling) then I do not see how ebay would be unfairly effected by the defendants use of the domain name put if the Patent Office are saying that domain name gives no rights apart from ownership then how can it be so detrimental as a mere registration.....UNFAIRLY DETRIMENTAL TO REGISTRANTS RIGHTS

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