Onyx, which sells auto parts and accessories under its “iD®” mark, accuses ID Parts of copying this mark in connection with sales of auto parts to benefit from the name recognition and good will associated with the mark and to mislead consumers into believing that ID Parts’ website, www.idparts.com, is associated with Onyx. Onyx, a pure online retailer, began selling through its www.CARiD.com website in 2008. Since then, Onyx says it’s iD® line has grown into one of the largest online retailers of automotive products in the country, receiving over 10 million visitors monthly. Onyx holds registrations for several stylized “iD” marks as well as “CARiD,” “BOATiD,” “CAMPERiD,” “MOTORCYCLEiD,” “POWERSPORTSiD,” “RACINGiD,” “RECREATIONiD,” “STREETiD,” “TOOLSiD” and “TRUCKiD.” Onyx asserts that ID Parts took on that name at the end of 2009, with full knowledge of Onyx’s rights in the “iD” marks, and in 2014 sought registration of a stylized mark consisting of the term “id” contained within a circle. That registration was refused due to a likelihood of confusion with Onyx’s “iD” mark, and ultimately the application was abandoned. Despite this, and despite receiving two cease and desist letters from Onyx, ID Parts has continued using the mark and domain name. Onyx asserts trademark infringement, unfair competition and false designation of origin under the Lanham Act and Massachusetts common law, dilution, cybersquatting, and deceptive trade practices under M.G.L. c. 93(a) § 2. Judge Zobel has the case.
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