Received a Trademark Infringement Notice for Domain Name centurion.shop

[shopman]

Hi guys, I received the following below letters within a 12-day time span from American Express for the domain name centurion.shop. Should I be worried given that:

• Centurion is a generic English or Historical term that has been used for over a millennia. Remember the Roman Centurions?
• Centurion is a city name in South Africa.
• Centurion is a name used by thousands of businesses globally. Does AMEX have exclusive rights to a domain name that is being used by thousands of businesses across the world?
• AMEX once lost a UDRP for the domain name centurion.cc. In that case, the user was even using AMEX style branding on its porn website but the panel still ruled in Respondent's favour.
• personally, I wasn't even aware that American Express had a product/brand called centurion but I guess that is hard to prove in a court of law.

How many of you have experienced this? Should I be worried? What will their next moves be after the second notice letter? I plan to defend my right to the domain name all the way.

Here are the letters:-


08-Mar-2017

Dear Domain Admin,

American Express Company or an affiliated company (“American Express”) is the owner of the well-known trademark and trade name Centurion. As you are no doubt aware, Centurion is a trademark used to identify products, services, activities and events related to American Express.

You have registered, without American Express’s permission or authorization, the domain name ‘centurion.shop’. The Domain Name incorporates the famous Centurion mark in its entirety and suggests American Express’s sponsorship or endorsement of your website. Our records do not show that Domain Admin is affiliated with American Express or authorized to use its trademarks. If you are affiliated with American Express, we ask that you advise us and we will review.

In view of American Express’s rights to the trademark Centurion, we ask that you immediately discontinue any and all use of the Domain Name and take steps to transfer the Domain Name to American Express.

Should you require additional information or wish to further discuss this issue, please contact the undersigned.

This letter is without prejudice to any of American Express’ rights and remedies, all of which are expressly reserved.

Sincerely,

American Express Trademark Enforcement



Second Letter:

Dear Domain Admin,

This is our SECOND communication with you. Please be advised that American Express Company or an affiliated company (“American Express”) is the owner of the well-known trademark and trade name Centurion. As you are no doubt aware, Centurion is the trademark used to identify products, services, activities and events related to American Express.

In connection to American Express’s proprietary rights over its famous trademark we bring to your attention the following:

1) You have registered, without American Express’s permission or authorization, the domain name ‘centurion.shop’. The Domain Name incorporates the famous Centurion mark in its entirety, and, by its very composition, suggests American Express’s sponsorship or endorsement of your website and correspondingly, your activities.

2) Your use of a Domain Name that incorporates the famous Centurion mark in its entirety constitutes trademark infringement and dilution of American Express’s trademark rights and unfair competition. Your use of our mark in the Domain Name is diluting use because it weakens the ability of the Centurion mark and domain name to identify a single source, namely American Express. Further, your registration and use of the Domain Name misleads consumers into believing that some association exists between American Express and you, which tarnishes the goodwill and reputation of American Express’s products, services, and trademarks.

In view of your infringement of our rights, we must demand that you provide written assurances that you will:
1. Immediately discontinue any and all use of the Domain Name;

2. Take immediate steps to transfer the Domain Name to American Express;

3. Identify and agree to transfer to American Express any other domain names registered by you that contain Centurion or are confusingly similar to the Centurion mark;

4. Immediately and permanently refrain from any use of the term Centurion or any variation thereof that is likely to cause confusion or dilution;

This letter is without prejudice to any of American Express’ rights and remedies, all of which are expressly reserved.

Sincerely,

American Express Trademark Enforcement

 

[wwwweb]

You can use your centurion card to defend it, big company to go against.

 

[shopman]

You can use your centurion card to defend it, big company to go against.

I don't think "BIG" matters in the eyes of a competent UDRP panel. They have to prove lack of fair use.

 

[wwwweb]

I don't think "BIG" matters in the eyes of a competent UDRP panel. They have to prove lack of fair use.

No, that is your job to put up a defense.

 

[alcy]

the only tm email I ever got so far was also for finanancial/bank related situation... it came from cyber laweyer with a signed pdf attached etc.. except it did not ask me to transfer but to not use domain for financial purposes of any sort that could link to the company.. and if I will, I will face consequences.. that was easy for me to do.. cause my stuff just sits on sale landers most time.. with occasional parking pages.. but if I go park, then I can omit whichever domain would be problematic with related ads.

now I am not saying your case is same... and from looks of it it may not be,.. however, I do not really see how they could force you to abandon domain if you just land it on say a forsale page.

 

[Hootsifer]

Def a big one, be careful.

 

[shopman]

Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

 

[shopman]

now I am not saying your case is same... and from looks of it it may not be,.. however, I do not really see how they could force you to abandon domain if you just land it on say a forsale page.

It is basically the same. Actually, I wanted to either sell the domain name or use it for a Centurion South Africa tourist site. Right now it is on a for sale landing page.

 

[Hootsifer]

Big companies ;like to prey on the little guy. It's just a fact. You should be able to have the shop of that name if used for other different purposes.

 

[Jurgen Wolf]

Create a mailbox at this domain... and answer to them and to UDRP-panel from this address... that you use it for your email-needs... no any "bad faith" here...
And disable your sale lander or remove A-record in DNS-settings...
And that's all.

 

[shopman]

Create a mailbox at this domain... and answer to them and to UDRP-panel from this address... that you use it for your email-needs... no any "bad faith" here...
And disable your sale lander or remove A-record in DNS-settings...
And that's all.

Hehe. Sounds like a smart idea! Actually, I was initially using it for a South African Centurion blog before I put it up for sale so I will revert to that.

 

[robert widener]

tell amex to kiss your you know what .

 

[canswift]

A quick TM check at the US database shows literally hundreds (close to a 1000) companies that have trademarked "centurion" as part of their product or services. This includes a Centurion Power Wash company. It seems a big stretch for AMEX to seem to indicate that they are the sole users of the "centurion" mark.

 

[Aspiring Billionaire]

For now, simply reply to them (don't ignore them), stating that :

(1) they are 100% incorrect in assuming that you were "no doubt aware" of their trademark, as centurion.shop was originally registered for use as a blog-project relating to your current landing page and it's related content.

(2) there is absolutely zero chance of you infringing on theirs or anyone else's trademark rights, ever.

Be sure to word your correspondence in a professional and sincere manner. Have the mindset that they're most likely assuming that your intentions are bad, and that they're perhaps within their legal right to be concerned.

Worry about possible UDRP's if/when they arise. For now, try to clarify the misunderstanding with their trademark-enforcement team, they're only doing their job.

Perhaps @Kate can provide better advice.

 

[tldboss]

Is it not better to mask/delete the domain name from this thread and from other sites where you have posted the letters.

Issue seems to be .shop, there is .org, .de etc (not sure they went after them)

I am sure you will get advice from NP members who are experienced/qualified in this area

Hope everything works out just fine, good luck

 

[WeSell-Domains]

I don't know about the international market but on the United States Patent and Trademark Office, Centurion is a registered Trademark of more than a dozen different companies and corporations. Just my opinion but I think it would be hard to prove that your "infringement" is more harmful than these others.

 

[Kate]

I have questions.

• What did you have in mind when you initially registered that domain ?
• How has it been used in the past ? Has it been parked ? Could it have shown sponsored links for competitors of Amex ? While they don't mention such an infringement in their correspondence, complaints often are not just about the domain name but how it's been used.

Today it is a blog, but I am wondering how the domain has been used previously. All articles have a 23rd March date. Fresh blog ?
Also, the whois says you are from a country that is quite far away from South Africa, where the city of Centurion is located.
Indeed, you have every right to blog about a city in some foreign country, but unless you have a demonstrable connection or interest, asserting your rights may be more difficult.

In a UDRP the onus is on the respondent to justify his/her legitimate interests over the disputed domain name. In other words, you need a good motive.

<devil's advocate mode>
I just hope that we have all the facts. Because, I, personally, wouldn't bother blogging about a small city in some far away land, and it's a blog that is not even monetized. What's the point ? Unless maybe I needed a quick excuse to cover up for something

A UDRP panelist would necessarily question your choice of domain name, depending on your explanations. What was the thought process leading you into registering that particular domain name ? Right now, you are not operating an online shop that is branded as 'Centurion', you are blogging about the city of Centurion and more broadly shopping in Centurion, which is not exactly the same thing. And why not register centurionshopping.com instead (available).
But only you could answer that question, I can't read your mind.

PS: I am surprised that there is not even a contact form on your website.

TL;DR version: we may not have all the facts. History matters.

 

[DNGear]

You could even put a note in your Blog.

We are no way affiliated to AMEX.

 

[alcy]

tms are about how you use your domains. so if you are a domainer and reseller, best you just put potentially problematic or "unsure" domains on simple for sale lander.. with contact info and sale price and nothing else.. I'd even skip the parking ads and park companies, as I think these could conflict with tm owners and used against you.

if you put your domain on sale lander, as was the case with the only tm claim I ever got, it will influence what the lawyer/company will say to you.. if they land on a fully developed site.. relating to their products or niche.. they'll likely sned you letter the op here describes... whereas if they land on a sale lander, they are likely to have nothing on yhou and email you the type of letter I got... like in the post I wrote above. I think it makes decent sense... in a world of tms that can be mega complex, and often brutal to domainers.

 

[dordomai]

if you registered the domain with the TM holder in mind I would drop it, panels are not stupid(most of the time) - if you try to BS them they can figure this out - They can look at your other registrations to see if there is a pattern for example.

Panels are also often prejudiced against domain investors and biased in favor of TM holders.

if you did not register with the TM holder in mind you will have to decide if it makes sense to take the risk and battle against a corporate giant.

If I were in your situation I would just drop it. Not worth the money or time(IMO not a lawyer)

 

[shopman]

Hi Kate, very pointed questions. I assume that those are lines the AMEX lawyers will be pursuing. So let me break it down one by one:-

What did you have in mind when you initially registered that domain ?

Basically, I am domain name investor (beginner) and I think I have every right to register any domain name that I feel has premium value so long as it is not infringing on any one's trademark rights. I have registered hundreds of domain names in past two months and they are all generic. Some of these have been developed into full fledged websites and others are simply listed for sale. I interpreted "centurion" as a generic domain name.

The "thought process" that went into selection of the domain name? I am a Kenyan and I have visited South Africa before. I even run two South African focused blogs. I had heard of Centurion in the context of the South African city and of course the Roman Centurion. Everybody knows the centurions, especially me being a history buff. AMEX cards are almost non-existent in Kenya so it is perfectly believable that I have never heard of Centurion the card before the AMEX guys came long with their trademark "infringement" notice.

How has it been used in the past ? Has it been parked ?

Initially, I had listed it with Undeveloped.com for sale and then I created a blog on 10th March.

Could it have shown sponsored links for competitors of Amex ?

Never. No ads on my blog and Undeveloped.com does not show any ads.

All articles have a 23rd March date. Fresh blog ?

Notice that the domain is less than a month old so it can't obviously contain articles older than date of registration-27th Feb, 2017. But I added an article on 10th march. Yes I added three today

Also, the whois says you are from a country that is quite far away from South Africa, where the city of Centurion is located.
Indeed, you have every right to blog about a city in some foreign country, but unless you have a demonstrable connection or interest, asserting your rights may be more difficult.

\

Are you suggesting that it is impossible for someone to blog about countries or regions they don't reside in? Or perhaps you could extrapolate further and say if I am a man then I have no interest creating a female website? I happen to have very wide interests. I reside in Kenya but I have blogged about Ethiopia, Japan, Philippines and other countries. I can live in Nairobi and create a NY blog, for example. For domain name investors and curious people, this is really normal. You spot an opportunity in whatever market and try to squeeze yourself in, even if it is in Antarctica! Plus, in this case, I happen to be a domain name investor. I build websites and monetize them which I think is a perfectly legitimate business.

I, personally, wouldn't bother blogging about a small city in some far away land, and it's a blog that is not even monetized. What's the point ? Unless maybe I needed a quick excuse to cover up for something

What's the point of blogging about some small city if you are not making money from it? How about passion? While I build websites and buy some domain names to make money off them, I have run blogs without monetizing just for the love of the subject!

And why not register centurionshopping.com instead (available).

Because I WANTED centurion.shop and it was available! It was shorter, brandable and has a TLD that I have fallen in love with.

Honestly, this domain name was available as late as late February this year! If this company was so desperate to have it, it could have snapped it in the Sunrise period or just before the generally availability and in the period between September 26th when .SHOP was launched and 27th February when I HAND-REGISTERED it. The domain name was not even listed in the Trademarked Clearing House.

Plus, there are literally thousands of businesses globally with the name "centurion", which is a generic name, why does AMEX seem to claim it has "exclusive" right to the name?

PS: I am surprised that there is not even a contact form on your website.

Why is that relevant. The domain name is only 3 weeks old. It takes a very long time to build a full fledged website with all the required pages and content. In the next week or so, it will certainly have a Contact is page

History matters.

How much facts, motive and history can you deduce from a domain name that is only three weeks old? I think the notice is preemptive. And if I do everything by the book-like I have done in the past three weeks anyway- i.e. continue to build a robust and vibrant Centurion city blog which is not monetized by advertising(I could monetize it by creating a Centurion travel guide in the future) and my website design is obviously not confusingly similar to AMEX website, does AMEX even stand a chance to steal the domain name from me? There is no way you can say I registered this domain name in bad faith! They just won't be able to prove that to competent panel no matter the legalese their lawyers use.

In the meantime, I will be adding more articles to my favorite blog

 

[shopman]

If I were in your situation I would just drop it. Not worth the money or time(IMO not a lawyer)

Thanks for the advice but I am not dropping it. In this case, I honestly was unaware that AMEX also owned the centurion marks. So my motives were very pure right from the beginning and I will ride on that-honest motive.

If I had registered AMEX.shop or AmericanExpress.shop or (now that I know AMEX also owns a centurion card) CenturionCard.shop, you could say I am a classic cybersquatter. But here is a case where I registered a generic name, which happens to also be used by thousands of businesses globally. Why wasn't "centurion" in the trademark clearing house?

By the way, AMEX lost the UDRP for centurion.cc where the user was using the domain name for a porn website and the user's website was confusingly similar to AMEX website so I am willing to take the risk!

 

[168]

Given your explanations don't waste your time on UDRP go straight to Fed court and file for RDNH

 

[lock]

Thank you for your domain enquiry...Then address their concerns that it won't be used for anything to do with their business like the the many ventures using same name. Then ask for payment in escrow for $xxxx since i not currently accepting other payment methods.

 

[promo]

I think that Dordomai means that the name is pretty much worthless and your time and effort is better spent elsewhere.. I would tend to agree with that assessment.