American Eagle Can't Fly
In American Eagle Outfitters, Inc. and Retail Royalty Co. v. Covanta Corp., FA 465210 (Nat.Arb.Forum (6/3/05), the National Arbitration Forum ruled against the Complainant based on its failure to prove rights in the disputed domain name americaneaglestores.com. The panel held that Complainant does not have rights in the component “American Eagle” apart from Complainant’s mark AMERICAN EAGLE OUTFITTERS as a whole.
The Complainant held numerous federal registrations in the mark AMERICAN EAGLE OUTFITTERS, but contended that the term "Outfitters" was only a descriptive component of its AMERICAN EAGLE mark. It contended that Respondent's domain name was confusingly similar because the term "store" did not distinguish the Respondent's name from that of Complainant.
The Respondent registered and used the americaneaglestore.com domain name to provide paid advertising links to third-party websites where visitors can purchase American Eagle coins and merchandise relating to wild birds. It maintained that the term "American Eagle" was not distinctive of Complainant's mark, except as part of AMERICAN EAGLE OUTFITTERS.
Pursuant to the first element of ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy"), in order to effect cancellation or transfer of a domain name, the Ccomplainant needed to prove, among other things, that the domain name registered by Respondent was identical or confusingly similar to a trademark in which Complainant had rights.
In this case however, the panel found that Complainant was not entitled to a presumption of validity in the mark "American Eagle", having disclaimed intermittently, "American" and "Outfitters" in its various trademark registrations of AMERICAN EAGLE OUTFITTERS. The effect of these disclaimers, the panel noted, is that Respondent could claim only the whole composite mark and not the particular portions disclaimed. Salem Five Cents Savings Bank v. Direct Federal Credit Union, FA 1033058 (Nat.Arb. Forum February 15, 2002); McCarthy on Trademarks and Unfair Competition (3rd ed. 1992). "The validity of the mark is to be determined by viewing the trademark as a whole and not just the words 'American Eagle'", the panel ruled, citing Men's Wearhouse, Inc. v. Wick, FA 117861 (Nat.Arb.Forum Sept.16,2002). On this basis, Complainant was denied relief and its complaint was dismissed.
The Complainant held numerous federal registrations in the mark AMERICAN EAGLE OUTFITTERS, but contended that the term "Outfitters" was only a descriptive component of its AMERICAN EAGLE mark. It contended that Respondent's domain name was confusingly similar because the term "store" did not distinguish the Respondent's name from that of Complainant.
The Respondent registered and used the americaneaglestore.com domain name to provide paid advertising links to third-party websites where visitors can purchase American Eagle coins and merchandise relating to wild birds. It maintained that the term "American Eagle" was not distinctive of Complainant's mark, except as part of AMERICAN EAGLE OUTFITTERS.
Pursuant to the first element of ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy"), in order to effect cancellation or transfer of a domain name, the Ccomplainant needed to prove, among other things, that the domain name registered by Respondent was identical or confusingly similar to a trademark in which Complainant had rights.
In this case however, the panel found that Complainant was not entitled to a presumption of validity in the mark "American Eagle", having disclaimed intermittently, "American" and "Outfitters" in its various trademark registrations of AMERICAN EAGLE OUTFITTERS. The effect of these disclaimers, the panel noted, is that Respondent could claim only the whole composite mark and not the particular portions disclaimed. Salem Five Cents Savings Bank v. Direct Federal Credit Union, FA 1033058 (Nat.Arb. Forum February 15, 2002); McCarthy on Trademarks and Unfair Competition (3rd ed. 1992). "The validity of the mark is to be determined by viewing the trademark as a whole and not just the words 'American Eagle'", the panel ruled, citing Men's Wearhouse, Inc. v. Wick, FA 117861 (Nat.Arb.Forum Sept.16,2002). On this basis, Complainant was denied relief and its complaint was dismissed.
posted by at 7/10/2005 07:30:00 AM
0 Comments:
Post a Comment
<< Home