What's in a Name?: PerfumeBay v. eBay Trademark Litigation
The Ninth Circuit addressed the practical issues and challenges concerning the rights associated with domain names and trademark rights on the World Wide Web. In Perfumebay.com Inc. v. eBay Inc., No. 05-56794, the Ninth Circuit affirmed the District Court's broad injunction preventing Perfumebay from using the conjoined form of the word because such use created a likelihood of confusion with eBay. Perfumebay.com Inc. v. eBay Inc., No. 05-56794, 14521 (9th Cir. Nov. 5, 2007).
In Perfumebay.com, the Ninth Circuit found the marks were similar because "Perfumebay" incorporates "eBay" in its entirety, especially when it is spelled "PerfumeBay" as it is sometimes, and also because the domain name perfumebay.com necessarily incorporates eBay's mark in its entirety. Perfumebay.com, No. 05-56794 at 14516. A domain name is an identifier, which corresponds to a particular webpage, much like a street address or telephone number. Brookfield, 174 F.3d at 1044. Each web page has a unique domain name. Id. Further, a domain name cannot have any spaces or hyphens between words—they must be conjoined. See, e.g., Perfumebay.com, No. 05-56794 at 14530. Further, the Circuit Court found the goods were related because both sites sell perfume, even though eBay offers an additional auction component to its website. Id. Finally, the Court found that both use the Internet for marketing and advertising. Id. (quoting Brookfield Communications v. West Coast Ent., 174 F.3d 1036, 1057 (9th Cir. 1999)). In the context of the Internet, this factor exacerbates the likelihood of confusion because competing marks can be encountered "at the same time, on the same screen." Id. at 14517 (quoting GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1207 (9th Cir. 2000)).
The Ninth Circuit found non-conjoined use of the words ("Perfume Bay" or "Perfume-Bay"), on the other hand, did not create a likelihood of confusion. See id. The Ninth Circuit reasoned that the non-conjoined form reduces the likelihood of consumer confusion because it does not encompass all of eBay's trademark. Id. at 14529. However, non-conjoined words or phrases cannot be used as domain names on the Internet. The result of this decision is that Perfumebay.com, Inc. can continue to call itself "Perfume Bay," but it is in effect enjoined from using its own name as its web domain name because it cannot use the conjoined version. Since a significant purpose of a domain name is to "identify the entity that owns the website," a domain name that mirrors a corporate name is a valuable corporate asset. See Panavision International, L.P. v. Toeppen, 141 F.3d 1316, 1327 (9th Cir. 1998). If the injunction stands, Perfumebay.com could be barred from capitalizing on that valuable asset.
As fashion and apparel companies increasingly turn to the Internet to market their goods, it is important to consider whether their chosen domain name is in any way similar to the trademark of another company that sells similar goods.
