americaneaglestore.com UDRP...a lucky case?

[Dave Zan]

http://www.arb-forum.com/domains/decisions/465210.htm

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.

With the panelist having accepted that reason from the respondent (or is it
an excuse?), will this set a stage for other respondents to cite the same for
not being able to respond on time?

Ordinarily rules are rules. But then again, it's also case to case, depending
on the panelist's discretion. (like the one above...)

But isn't one reason why we have rules is to help simplify things? Or has this
also happened in other cases?

Fortunately for the respondent:

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”.

Would the respondent have won anyway even if they didn't reply?

[jberryhill]

Forum Rule 7 permits a Respondent, who has not submitted a timely
Response, to submit an additional statement responsive to a Complaint
even after NAF has issued a Notification of Default. See e.g.
Florists Transworld Delivery v. Domain Deluxe, No. 102751 (NAF Mar.
1, 2002) (Additional Statement filed by Respondent and considered
after NAF issued notice of default); BPI Communications, Inc. et al.
v. Boogie TV LLC, No. 105755 (NAF Apr. 30, 2002)(Where [no] response
was filed, . . . Additional Statement of Respondent Pursuant to Rule
7 . . . considered the substantive Response in th[e] proceeding. ).
There is no requirement that a Response be filed in order for a party
to submit an additional written statement. See Limco, Inc. et al. v.
Rarenames et al., No. 99693 (NAF Nov. 27, 2001)(Complainants
Additional Statement submitted before any Response was filed).

I agree with you that "rules are rules", but you also have to consider the peculiar situation of the UDRP. When a court looks at bending a rule, the court will look at the relative harms caused by bending the rule, the purpose of the rule, and what would be "fair". In the UDRP, the Complainant has an infinite amount of time to compose their complaint - they can spend months on it if they want. After they file the complaint, then if any deficiencies are found, the complainant is given time to correct those deficiencies. On the other hand, the respondent gets 20 days, period. If it is at the NAF, then the NAF's own procedural rule adds another five days, with certain restrictions and a fee payment.

So, consider the situation where the respondent is at 22 days, and has defaulted. If, on day 23, the dispute resolution provider has not yet appointed a panelist to even read the complaint, then nobody is prejudiced by permitting the response to be considered. It certainly doesn't change the facts of the situation, and it is not as if it is going to slow things down - the case will get to the panelist in the same amount of time, so the complainant is not harmed.

[Dave Zan]

Peculiar is right. But thanks for the detailed explanation, John!

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Another "late" one, although it's from WIPO this time:

http://arbiter.wipo.int/domains/deci...2005-0198.html

I'm sure there's a supplementary rule somewhere, just like the one you pointed
out from NAF.

But the respondent nevertheless won, and quite a reply too!