- Joined
- May 6, 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......
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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 Perfumebay.com 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 perfumebay.com or perfume-bay.com, 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.”
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C.T.L.R. 2008, 14(2), N31-32
here it is, for education only......
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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 Perfumebay.com 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 perfumebay.com or perfume-bay.com, 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.”
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C.T.L.R. 2008, 14(2), N31-32
