eBay blocks Perfumebay from using mark and website

In Perfumebay.com Inc v eBay Inc, the US Court of Appeals for the Ninth Circuit has affirmed a district court decision holding that the 'conjoined' versions of the mark PERFUMEBAY infringed the trademark EBAY.

In the late 1990s, the owner of Perfumebay.com Inc, Jacquelyn Tran, started selling perfume on the Internet. She used both eBay and her own websites, including 'perfumebay.com' and 'perfume-bay.com', to sell perfume online. She stopped using eBay in 2004. When Perfumebay applied for the registration of its PERFUMEBAY mark, eBay filed an opposition. After negotiations between the parties broke down, Perfumebay filed a complaint for declaratory judgment in the district court, and a bench trial was held on the parties' various claims.

In upholding the lower court finding that the conjoined versions of the PERFUMEBAY mark infringed eBay's trademark, the appellate court noted that in the internet context, the three most important factors in evaluating likelihood of confusion are:

• the similarity of the marks;
  
  
• the relatedness of the goods and services; and
  
  
• the parties' simultaneous use of the Internet as a marketing channel.

According to the court, when this 'internet trinity' suggests that confusion is likely, any other factors must weigh strongly against a likelihood of confusion to avoid a finding of infringement.

The court found that the marks were similar because PERFUMEBAY incorporated EBAY in its entirety, especially when spelt with a capital 'B'. Although there were also differences in the marks, the strength of eBay's mark caused this factor to weigh in its favour. The fact that both parties sold perfume made the relatedness of the goods weigh against Perfumebay. Finally, since both parties used the Internet as a marketing and advertising facility, the third factor favoured eBay as well. Since the remaining factors used in evaluating likelihood of confusion did not strongly weigh in Perfumebay's favour, the court found that the conjoined versions of the PERFUMEBAY mark infringed eBay's trademark rights.

The appellate court also upheld the district court's holding that non-conjoined versions of Perfumebay's mark, such as PERFUME BAY, did not infringe eBay's trademark. Given the online nature of Perfumebay's business, however, this victory appears of little consolation. Since domain names do not currently have spaces in them, the court's overall decision essentially deprives Perfumebay of a self-identifying online address from which to conduct its exclusively internet-based business.

For background discussion of this case see "eBay's injunction against use of 'perfumebay.com' stayed".

Susan M Natland and Michael T Richmond, Knobbe Martens Olson & Bear LLP, Irvine