American Eagle Outfitters, Inc. and
Retail Royalty Company v. Covanta Corporation
Claim
Number: FA0504000465210
Complainant is American Eagle Outfitters, Inc. and Retail Royalty Company (collectively “Complainant”), represented
by Kathryn E. Smith, of Wood, Herron and Evans, L.L.P., 2700 Carew Tower, 441 Vine Street, Cincinnati, OH 45202. Respondent is Covanta Corporation (“Respondent”), 301 Thelma Dr. #266, Casper, WY
82609.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <americaneaglestore.com>, registered with Moniker
Online Services, Inc.
The
undersigned certifies that he has acted independently and impartially and, to
the best of his knowledge, has no known conflict in serving as Panelist in this
proceeding.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on April
19, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 20, 2005.
On
April 22, 2005, Moniker Online Services, Inc. confirmed by e-mail to the
National Arbitration Forum that the domain name <americaneaglestore.com>
is registered with Moniker Online Services, Inc. and that Respondent is the
current registrant of the name. Moniker Online Services, Inc. has verified that
Respondent is bound by the Moniker Online Services, Inc. registration agreement
and has thereby agreed to resolve domain-name disputes brought by third parties
in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
April 25, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 16, 2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@americaneaglestore.com by e-mail.
Having
received no timely Response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default. However, on May 23, 2005, Respondent
submitted an untimely response citing miscommunication between Respondent and
counsel as the reason for missing the original deadline. On May 24, 2005, Complainant filed a Reply
opposing consideration of Respondent’s tardy Response. In its discretion, the Panel will consider
the Response as well as Complainant’s Reply.
On
May 18, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed the Honorable
Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <americaneaglestore.com>
domain name is confusingly similar to Complainant’s AMERICAN EAGLE OUTFITTERS
mark.
2. Respondent does not have any rights or
legitimate interests in the <americaneaglestore.com> domain name.
3. Respondent registered and used the <americaneaglestore.com>
domain name in bad faith.
B. Respondent contends that the term “American
Eagle” is not distinctive of Complainant apart from the entire mark, AMERICAN
EAGLE OUTFITTERS. Respondent is
entitled to use the <americaneaglestore.com> domain name to
provide commercial links to locations where visitors can purchase American
Eagle coins and merchandise relating to wild birds.
C. In its Reply, Complainant contends that the
terms “American Eagle” in Complainant’s AMERICAN EAGLE OUTFITTERS mark is
highly distinctive; that “Outfitters” is the descriptive component. Using an Internet Google search of the
phrase “American Eagle Store”, Complainant contends that its retail stores are
often referred to by the relevant public as “American Eagle Store(s)”.
Complainant,
Retail Royalty Company, is a wholly owned subsidiary of Complainant, American
Eagle Outfitters, Inc. These two
entities will be collectively referred to as “Complainant.” Complainant holds a number of trademark
registrations with the United States Patent and Trademark Office (“USPTO”) for
the AMERICAN EAGLE OUTFITTERS mark related to many products, including
clothing.
Respondent,
Covanta Corporation, registered the <americaneaglestore.com>
domain name on March 19, 2003.
Respondent is using the disputed domain name to provide paid advertising
links to third-party websites corresponding to the term “American Eagle”.
Paragraph 15(a)
of the Rules instructs this Panel to "decide a complaint on the basis of
the statements and documents submitted in accordance with the Policy, these
Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a)
of the Policy requires that Complainant must prove each of the following three
elements to obtain an order that a domain name should be cancelled or
transferred:
(1) the domain name registered by Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has rights; and
(2) Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and
is being used in bad faith.
Complainant
has rights in the AMERICAN EAGLE OUTFITTERS mark through registration with the
United States Patent and Trademark Office and by continuous use of the mark in
commerce. See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. The respondent has the
burden of refuting this assumption); see also Men’s Wearhouse, Inc. v. Wick,
FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law,
registered marks hold a presumption that they are inherently distinctive and
have acquired secondary meaning.”).
Complainant
contends that Respondent’s domain name, <americaneaglestore.com>,
is confusingly similar to Complainant’s mark AMERICAN EAGLE OUTFITTERS because
the domain name incorporates the “American Eagle” dominant feature of
Complainant’s mark and merely adds the word “store.” Complainant argues that the addition of the word “store” to the
dominant features of Complainant’s mark does not sufficiently differentiate the
domain name from the mark with regard to Policy ¶ 4(a)(i) because Complainant’s
mark continues to be the dominant element of Respondent’s domain name and the
word “store” simply describes Complainant’s business. See Hammond Suddards Edge v. Westwood Guardian
Ltd., D2000-1235 (WIPO Nov. 6, 2000) (finding that the domain name,
“hammondsuddards.net,” is essentially identical to the complainant's mark,
Hammond Suddards Edge, where the name “Hammond Suddards” identifies the
complainant independently of the word “Edge”); see also WestJet Air Ctr., Inc. v. W. Jets LLC,
FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com>
domain name is confusingly similar to the complainant’s mark, where the
complainant holds the WEST JET AIR CENTER mark).
Respondent
contends that Complainant does not have rights in the component “American Eagle”
apart from Complainant’s mark as a whole.
Complainant owns
several USPTO registrations for AMERICAN EAGLE OUTFITTERS; however, in some
registrations, Complainant disclaimed the exclusive right to use “American” and
“Outfitters”, apart from the mark, and in others, disclaimed the exclusive
right to use “Outfitters”apart from the mark.
“The effect of the disclaimer is that the applicant claims only the
whole composite mark and not the particular portion(s) disclaimed.” See
Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002); see
also Salem Five Cents Savings Bank v. Direct Federal Credit Union, FA
103058 (Nat. Arb. Forum February 15, 2002); see also McCarthy on Trademarks and Unfair Competition (3d ed. 1992) at x 19.20 1. The validity of the mark is to be determined
by viewing the trademark as a whole and not just the words “American Eagle.” See
Men’s Wearhouse, Inc. v. Wick, supra.
“Under U.S.
trademark law, registered marks hold a presumption that they are inherently
distinctive and have acquired secondary meaning.” Id. Complainant is entitled to this presumption as to the AMERICAN
EAGLE OUTFITTERS mark; however, the presumption does not apply to “American
Eagle” which is less than the whole mark. Id.
To the extent the Complainant has any rights pertinent to the words
“American Eagle”, those rights must arise from common law. Id. However, Complainant has failed to establish
that the words “American Eagle,” apart from the registered mark as a whole,
have acquired a secondary meaning such that the relevant public exclusively
associates the words with Complainant as a source of services. Id.
Nor has Complainant established secondary meaning in the phrase
“American Eagle Stores”.
Furthermore,
the words “American Eagle” are not exclusively associated with Complainant.
Id.; see also Winchester Properties, LLC v. DefaultData.com, FA
97114 (Nat. Arb. Forum June 22, 2001) (“Respondent has shown that the word
‘Winchester’ alone is used by entities other than Complainant.” The domain name <winchestercc> is not
identical or confusingly similar to Complainant’s mark, Winchester Country
Club, nor is it a mark in which Complainant can claim rights or interests.); see
also CRS Technology Corp. v. Condenet, Inc., FA 93547 (Nat. Arb.
Forum Mar. 28, 2000) (“concierge is not so associated with just one source that
only that source could claim a legitimate use of the mark in connection with a
website.”). For example, the term
“American Eagle” is the name used by the United States Mint for a line of
bullion coins. Additionally, there are
other trademarks that incorporate the words “American Eagle”.
Therefore,
Complainant has failed to establish exclusive rights in the words “American
Eagle” apart from Complainant’s mark AMERICAN EAGLE OUTFITTERS for the purposes
of satisfying Paragraph 4(a)(i) of the Policy.
Since Complainant has not submitted sufficient evidence to establish
protectable rights in the domain name <americaneaglestore.com>,
the issues of rights or legitimate interests and bad faith need not be
addressed.
Having failed to
establish the first element required under the ICANN Policy, the Panel
concludes that relief shall be DENIED and the Complaint DISMISSED.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
June 3, 2005
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