eBay Wins Appeal Vs. Perfume Bay

**Dave Zan** · 11-06-2007, 08:17 PM

Some of you might remember the dispute between eBay and the company
Perfume Bay. Just got a news update:

http://news.yahoo.com/s/ap/20071106/...emark_dilution

A company whose name sounds like eBay Inc.'s has lost its appeal of a court ruling that protected the online auctioneer from "trademark dilution" by e-commerce rivals with similar-sounding names.

A three-judge panel of the 9th U.S. Circuit Court of Appeals unanimously upheld a lower court's ruling in September 2005 against Perfumebay.com and Perfume-bay.com.

**acesfull** · 11-06-2007, 08:19 PM

That seems a little bit of an overreach - a little bit disturbing. Does that mean you can't use "bay" as a second word of a two-word domain? What's next... Tampa Bay?

And then, what about PerfumeTube.com? Or PerfumeSpace.com?

**Gerry** · 11-06-2007, 08:54 PM

Wow!!!

What's next? Change the name of Chesapeake Bay to Eastern US Offshore Body of Water to protect eBay?

I own a couple that they tried to seize or force me not to use but I argued my point of being legitimate geographical locales and they backed off. Perhaps that is the difference here...dilution of the word "bay". Still, that is incredible that they can wield that much clout.

Has ebay ever lost a decision, domain name or otherwise?

I know they have voluntarily stopped selling controversial items. But I don't think they have had any judgments against them.

**stock_post** · 11-06-2007, 09:15 PM

This is BS..

They are not the same and it is bad.

**nametrader** · 11-06-2007, 09:28 PM

A BLACK DAY GUYS

I seriously regret, I always thought Courts are there to protect us(The Common Man)
But once again it is proved that Bureaucracy wins most of the times, because Ebay is big company with 10 year history... does it mean the new born companies are SLAVES?

What kind of justice is this, now that the bay is gone, can't I use "SOFT" "SEE" or something else that is DEAD ON GENERIC

This is so heart wrenching and making others doing business fear about their future everyday.

OMG the word "bay" is owned by ebay!!!!!!!!! what else and what more?

**tekz999** · 11-06-2007, 09:44 PM

What I see is there is the word "ebay" in the domain "perfumebay.com".

**acesfull** · 11-06-2007, 09:50 PM

Originally Posted by tekz999

What I see is there is the word "ebay" in the domain "perfumebay.com".

Now that's a real bright comment. I see pussy in pussycat.com too.

Also, gas/service stations have "service bays." Oh, servicebay has ebay in it too.

**Gerry** · 11-06-2007, 10:05 PM

Originally Posted by tekz999

What I see is there is the word "ebay" in the domain "perfumebay.com".

Yes, exactly...they feel the sequence of those four letters in anything is there's to claim and own...ChesapeakeBay (a body of water), RoseBay (a native wildflower and herb), MaineBays (my own planned photo journal of kayaking the coast of Maine), SittingOnTheDockOfTheBay (an Otis Redding hit).

My point is that eBay does not own the alphabet. With the exception of my photo journal, all of these existed long before eBay.

So would it be prudent to argue that eBay in and of itself infringed and added to the dilution of the word Bay? And has eBay infringed upon and encroached on the rights of others by restricting the use of the four letter sequence E B A Y ?

And would the heirs to the founder of Chesapeake Bay, the botanist who named Rose Bay, and the surviving heirs of Otis Redding be entitled to royalties from eBay?

In my opinion, eBay is not only trying to control eBay but also the internet. The internet as it stands now does not allow a space in the URL therefore it must be conjoined words or words separated by a hyphen or underscore.

They, eBay, are so damn concerned about someone using the word bay or the combination of ebay yet they could care less about the rights of others. Tiffany and Company recently lost a ruling in attempts to get eBay to stop listing Tiffany pieces as eBay was flooded with fakes and forgeries. Their, eBay's, defense was simple...we don't handle it therefore we are not responsible for authenticating it.

So the global marketplace is saturated and diluted with fake and bogus Tiffany items that has enormously eroded the brand's mark of integrity and undermined the value of legitimate pieces.

Next up...all words ending in le to be outlawed.

By the way, I just did a bulk check

There are 42,869 registered domains with ebay in them, some with 6 extensions registered (.com .net .org .info .biz .us) so I would imagine that is a few hundred thousand.

Looks like eBay Legal is gonna be pretty damn busy.

Imagine,

If Microsoft went after everyone who had the word soft in their domain name.

534,800 results returned with the word soft. If all 6 extensions above were taken, that is over 3 million.

That is what I call job security for the paralegals.

**Jacksplat** · 11-06-2007, 10:54 PM

Tiffany and Company should join forces with the 400 year old "The Bay" (Hudsons bay Company) recently bought by new investors.

If anyone has rights to use the word "bay" it should be "The Bay".

When I first heard of ebay i did in fact consider it an interpretation of an electronic bay with the bay coming into play.

ebay is bothering me for 2 domains, when i renew them I'll find out what happens next and of course will report here.. appx 4 months to go.

Jack

**Gerry** · 11-06-2007, 11:09 PM

Originally Posted by Jacksplat

Tiffany and Company should join forces with the 400 year old "The Bay" (Hudsons bay Company) recently bought by new investors.

If anyone has rights to use the word "bay" it should be "The Bay".

When I first heard of ebay i did in fact consider it an interpretation of an electronic bay with the bay coming into play.

ebay is bothering me for 2 domains, when i renew them I'll find out what happens next and of course will report here.. appx 4 months to go.

Jack

Are you talking about the tea company? Cool.

They bothered me about 2 domains I had. They insisted I had to surrender them or cancel them.

I actually used the above examples of Chesapeake Bay, Rose Bay, and Otis Reading complete with dates, names, and ancestry. I told eBay that I would be happy to conduct a genealogy search for the heirs of the above and notify them on eBay's behalf of their potential windfall of profits from eBay.

In that same letter, I sent eBay the number of domains that I found with E B A Y in it. I told them for $10.00 each, I would be happy to prepare and send a C&D to each holder of the domain.

They never did respond to my request to assist them with the C&D, but miraculously they backed off the domain issue with me. They did tell me I could keep the names but I could not build a site or sell them. I told them if I decided to sell them they would be the first to know because I would list them for sale on eBay complete with the sites.

So that was that. Never heard another word from eBay regarding any of my domains.

I wish you luck.

**Jacksplat** · 11-06-2007, 11:32 PM

I like your attitude Doc. Good to see someone punch back and walk away without a wrinkle. Hopefully I can keep my composure as well.

The Bay is a big company, I bet they don't have the time to protect thier brand.

**Dave Zan** · 11-07-2007, 01:35 AM

BTW, here's the link to the actual decision:

http://www.ca9.uscourts.gov/ca9/newopinions.nsf/85AEE84897725D758825738A005C180E/$file/0556794.pdf?openelement

It wasn't really a total loss, although both parties shoulder their own costs
on appeal.

**nametrader** · 11-07-2007, 02:03 AM

Originally Posted by Doc Com

Are you talking about the tea company? Cool.

They bothered me about 2 domains I had. They insisted I had to surrender them or cancel them.

I actually used the above examples of Chesapeake Bay, Rose Bay, and Otis Reading complete with dates, names, and ancestry. I told eBay that I would be happy to conduct a genealogy search for the heirs of the above and notify them on eBay's behalf of their potential windfall of profits from eBay.

In that same letter, I sent eBay the number of domains that I found with E B A Y in it. I told them for $10.00 each, I would be happy to prepare and send a C&D to each holder of the domain.

They never did respond to my request to assist them with the C&D, but miraculously they backed off the domain issue with me. They did tell me I could keep the names but I could not build a site or sell them. I told them if I decided to sell them they would be the first to know because I would list them for sale on eBay complete with the sites.

So that was that. Never heard another word from eBay regarding any of my domains.

I wish you luck.

Hudsons Bay Company is the oldest corporation in Canada, I think it is the first Incorporation in Canada. They are not Tea company, They used to do Fur trade in the past now they have Classy super stores.

**paulc** · 11-07-2007, 07:47 AM

Originally Posted by Doc Com

Are you talking about the tea company? Cool.

They bothered me about 2 domains I had. They insisted I had to surrender them or cancel them.

I actually used the above examples of Chesapeake Bay, Rose Bay, and Otis Reading complete with dates, names, and ancestry. I told eBay that I would be happy to conduct a genealogy search for the heirs of the above and notify them on eBay's behalf of their potential windfall of profits from eBay.

In that same letter, I sent eBay the number of domains that I found with E B A Y in it. I told them for $10.00 each, I would be happy to prepare and send a C&D to each holder of the domain.

They never did respond to my request to assist them with the C&D, but miraculously they backed off the domain issue with me. They did tell me I could keep the names but I could not build a site or sell them. I told them if I decided to sell them they would be the first to know because I would list them for sale on eBay complete with the sites.

So that was that. Never heard another word from eBay regarding any of my domains.

I wish you luck.

I like your style there Doc.

**Acro** · 11-07-2007, 09:49 AM

I believe part of the reason behind this decision is not just the formation of the word "ebay" within the perfume+bay compound, but also the fact that it's a point of sale. eBay has been using these legalese technicalities to its advantage for a while now.

**DNQuest.com** · 11-07-2007, 10:17 AM

Though I don't like the giants winning is cases like this, but here is a quote from teh domain owner...

Tran, who also owns ScentGuru.com and BeautifulPerfumes.com, asserted in court documents that her company's name wasn't a knockoff of eBay but was meant to recall "a bay filled with ships importing perfumes from all parts of the world."

Who had ever had a memory of something like this? If their name was Bay or a reason to use the term Bay, I would be more upset with this decision. The difference between this and the other "ebay" referenced names in this thread is that they are a competing business with ebay and in no way does "bay" have anything to "perfume". It was a very clever name and it was intentionally used because of the ebay reference. And reason the BS reason why they registered it just make my eyes roll

Though I hate ebay won, I understand why they did. And in all honesty, I probably would have ruled that way too.

**barefoot** · 11-07-2007, 10:46 AM

Does anyone remember some years ago when J. Crew helped themselves to Crew.com because, essentially, "crew" is a part of "j. crew"? I nearly fell off my chair when I read that decision.

I remember wondering if they were planning to steal EW.com away as well, using the same logic.

**Gerry** · 11-07-2007, 11:04 AM

Originally Posted by DNQuest.com

The difference between this and the other "ebay" referenced names in this thread is that they are a competing business with ebay

I understand your point here, but the domain name that ebay sent me a C&D on was MaineBays.com.

Not a thing to do with eBay. Totally to be a photo site of a planned two week kayaking trip along the coast of Maine on up into Nova Scotia.

Simply because of, and no other reason whatsoever, the domain name contained the four letters E B A Y they attempted to strong arm me into relinquishing the domain, surrendering it, or canceling it. This was sent to me via email and to PO Box by eBay's legal department.

So it seems to me that eBay is spending a lot of time and effort and expense chasing down every domain that is inclusive of those letters. Whether "diluting" the word bay in eBay's eyes, blatant misuse of a TM, or throwing the net to catch all the fish, big and small, seems like a massive waste of time and effort.

My point in using those examples was there was nothing eBay could do or say to change history and they did not own the alphabet.

And I still have the domains.

**acesfull** · 11-07-2007, 11:34 AM

Originally Posted by Doc Com

I understand your point here, but the domain name that ebay sent me a C&D on was MaineBays.com.

Not a thing to do with eBay. Totally to be a photo site of a planned two week kayaking trip along the coast of Maine on up into Nova Scotia.

Simply because of, and no other reason whatsoever, the domain name contained the four letters E B A Y they attempted to strong arm me into relinquishing the domain, surrendering it, or canceling it. This was sent to me via email and to PO Box by eBay's legal department.

So it seems to me that eBay is spending a lot of time and effort and expense chasing down every domain that is inclusive of those letters. Whether "diluting" the word bay in eBay's eyes, blatant misuse of a TM, or throwing the net to catch all the fish, big and small, seems like a massive waste of time and effort.

My point in using those examples was there was nothing eBay could do or say to change history and they did not own the alphabet.

And I still have the domains.

I had a similar situation a few years ago, don't recall the name now. But it appears to me that eBay is abusing the system and spirit of the rules and laws. One big problem is that there seems to be no penalty for abusing the system - doing some kind of all-encompassing domain scan and threatening everyone who has a domain with some similarity, often with little or no merit. There are a few other companies that do the same thing (you may know of one or two)

This should concern everyone here. The point is, where do you draw the line here... domains that end with bay, that end with ebay, that have ebay anywhere in sequence in a domain?

Virtually every domain has some similarity to many others - just like people names in a phone book. If these kinds of decisions are going to continue to happen, then almost any domain can be challenged. I think domain owners should have more protection.

**DNQuest.com** · 11-07-2007, 11:40 AM

Actually, I believe I defended your rights to that name in a thread here or somewhere else. Yes, ebay sends out C&Ds to anything with bay or ebay, but it is automated. Do I like it? no. But why does ebay do it in the first place? maybe it is becuase hundreds of thousands of domains (maybe more) containing their marks are held by cybersquatters making money off their hard work. I always say the cybersquatters are ruining this business for real domainers and this is another example why. Do you really blame ebay for protecting their mark? I don't. Do they overreach? heck yeah. Do they have reason to? most definately.

But I do know this, if you get a C&D because of the example you gave and you are not competing against or trying to pull a fast one, once you respond to them and explain your situation, they do leave you alone. The C&Ds are automated. It is an inconvenience for us, that you can blame on the squatters.