START-UP TRADEMARK OPPOSITION POLICY

 

DECISION

 

American Airlines Inc. v. WebWide Internet Communication GmbH

Claim Number: FA0204000112518

 

PARTIES

Complainant is American Airlines Inc., Dallas, TX, USA (“Complainant”) represented by Kay Lyn Schwartz, of Gardere Wynne Sewell, LLP.  Respondent is WebWide Internet Communication GmbH, Durmersheim BW, GERMANY (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <american.biz>, registered with Secura GmbH.

 

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge, has no known conflict in serving as Panelist in this proceeding.

 

Estella S. Gold as Panelist.

 

PROCEDURAL HISTORY

Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel.  As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).

 

Complainant submitted a Complaint to the Forum electronically on April 27, 2002; the Forum received a hard copy of the Complaint on May 2, 2002.

 

On May 7, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 28, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).

 

A timely Response was received and determined to be complete on May 16, 2002.

 

Complainant submitted a timely Additional Submission pursuant to Forum Supplemental Rule 7 on May 21, 2002.

 

Respondent submitted a timely reply on May 26, 2002.

 

Complainant submitted a second Additional Submission on May 29, 2002 that did not comply with Forum Supplemental Rule 7.

 

Respondent submitted a Reply on June 4, 2002 that also did not comply with Forum Supplemental Rule 7.

 

On May 31, 2002, pursuant to STOP Rule 6(b), the Forum appointed Estella S. Gold as the single Panelist.

 

RELIEF SOUGHT

Transfer of the domain name from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

1.                  Complainant is the owner of the registered mark “American” on the Principal Register of the United States Patent and Trademark Office, Registration No. 2,309,065, registered January 18, 2000, for goods in Class 28, described as “model airplanes made of plastic, metal and wood; model airplanes incorporating a metal coin bank.”

2.                  The Respondent’s registration to the domain name <American.biz> is identical to the registered trademark “American” for purposes of STOP proceedings. 

3.                  Complainant has continuously used the mark “American” since 1991 in connection with model airplanes.

4.                  Respondent has never been authorized by Complainant to use Complainant’s registered marks.

5.                  Complainant alleges that Respondent’s registration of <American.biz> is being used in bad faith.

6.                  Complainant alleges that the registration by Respondent of the domain name <American.biz> prevents Complainant, as owner of the trademark “American” from use of its mark in the domain name at issue.

7.                  Complaint’s registration of the mark “American” does not incorporate any logo or otherwise distinctive designation, apart from the word “American.”

8.                  Complainant provides no documentation other than the mere assertion that the term “American,” as associated with model airplanes, has achieved secondary meaning, in contrast with its well-established reputation and associated good will in the transportation industry associated with its mark “American Airlines.” 

 

B. Respondent

            Respondent’s contentions are:

1.                  Respondent is in the business for hotels, travel and tourism industry.

2.                  Respondent received notice of an IP claim from NeuLevel on or about March 12, 2002. 

3.                  Respondent has registered the trademark “American” in Classes 35, 38, and 42 in Austria on May 10, 2002.

4.                  Respondent has registered numerous domain names with geographic designations, such as <european.biz>, <centraleurope.biz>, <easterneurope.biz>, <marketplace.info>, et al.

5.                  Respondent alleges that the trademark “American” is generic and, therefore, unprotectable.

6.                  Respondent has never offered its domain name <American.biz> for sale to others including Complainant.

7.                  Respondent alleges that generic/geographic names are not capable of protection when incorporated into a domain name.

           

C.  Additional Submissions

All submissions have been considered, and their contents incorporated in the above-listed contentions.

 

FINDINGS

1.                  It is undisputed that the mark “American” is identical to the registration of the domain name <American.biz> for this STOP proceeding.

2.                  Complainant’s mark was registered in 2000 on the Principal Register at the United States Patent and Trademark Office, but has not yet achieved Section 8 and Section 15 status (incontestability). 

3.                  The mark “American” as registered, relates to the sale of model airplanes, and no facts were presented to show that this mark as associated with that product has achieved secondary meaning in the marketplace.

4.                  There is no evidence that Respondent has attempted to sell the domain name to others.

5.                  There is no evidence that the Respondent has put the mark into use in Respondent’s channel of trade at this time. 

6.                  It is undisputed that the domain name <American.biz> has been registered by Respondent.

 

DISCUSSION

Paragraph 15(a) of the STOP 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 STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:

 

(1)             the domain name is identical to a trademark or service mark in which the Complainant has rights; and

(2)             the Respondent has no rights or legitimate interests in respect of the domain name; and

(3)             the domain name has been registered or is being used in bad faith.

 

Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent, where applicable.

 

Complainant’s Rights in the Mark

It is fundamental to this proceeding that the Complainant’s rights in the mark rest upon the legitimacy of the registered trademark in the word “American.”  Despite the summary nature of the procedures under the Rules, the information related to the registration of “American” is adequate for an analysis of the legitimacy of the Complaint’s registration.  Although Respondent could seek relief from the Courts or the administrative body which registered the trademark through a cancellation proceeding, the jurisdiction provided by Rule 15 is adequate to permit an evaluation of such a simple mark as the mark “American.”  When terms such as “American” appear as a mark, the determination as to whether the mark should be considered geographic and/or “generic” is a threshold question in determining the legitimacy of the Complainant’s rights in that mark. 

 

Furthermore, the Lanham Act, 15 U.S.C. §1052(e)(3) provides in relevant part, “No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the Principal Register on account of its nature unless it – (e) consists of a mark which…(2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them…(emphasis supplied).  See TMEP §1210.

 

On the whole, courts have held that the addition or variation of any element of AMERICAN, no matter how slight, will remove it from the geographically descriptive category for American-based sellers. For example, AMERICAN GIRL shoes[1], ALL AMERICAN on radios[2], AMERICAN PLAN CORPORATION for insurance services[3],   and AMERICANA for hotel services[4], were held arbitrary uses.

 

American Airlines, however, did not add additional words or a variation of any element of “American,” in its registration of the mark at issue. The unadorned, simple word AMERICAN as used by Complainant herein has been repeatedly held geographically descriptive (and therefore unprotectable) on paper cups, ceramic tiles, gasoline, truck bodies, and automobile associations[5].

Although American Airlines has claimed secondary meaning in the registered mark “American Airlines,” in use since approximately 1930, no such indication of fame, established goodwill, a secondary meaning, has been presented to overcome the allegations of the Respondent that the mark “American” for model airplanes is anything other than generic and/or geographically descriptive.  American Airlines may not import the secondary meaning associated with the mark “American Airlines” in the field of transportation to its geographical mark “American” without substantiation, where the Respondent has raised the issue of the protectability and legitimacy of that trademark.

 

If Complainant does not have rights in the mark, the Complaint must be dismissed.  The Complainant has presented a valid Certificate of Registration of the mark “American” upon the Principal Register, which creates a rebuttable presumption of the mark’s validity, 15 U.S.C. §1057(b).  The Complainant is a Delaware Corporation doing business in the United States, and therefore, it would appear that the designation “American” accurately depicts a geographical location which identifies the place that is the origin of goods connected with the model airplanes at issue.

 

Since the Complainant has no legitimate interest in the registered mark “American” because that mark is both generic and geographically descriptive, and the Respondent has appropriately raised that argument to rebut the registration, (which has not as yet been certified as incontestable), the Panel need not reach the issue of the Respondent’s legitimate interests in the registration of the domain name.  Therefore, the allegations of the complainant and the Respondent’s assertions are not addressed in this Opinion.

 

DECISION

The Panel finds that the Complainant has not satisfied the requirements of Paragraph 4 of the STOP Policy, and accordingly, it is ordered that the domain name at issue, <American.biz>, not be transferred from Respondent to Complainant. 

 

 

 

 

Estella S. Gold, Panelist
Dated: June 13, 2002

 

 

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