shopman
Established Member
- Impact
- 244
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:
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
- 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.
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
