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

 

[frank-germany]

tm law is more complicated ...
one can not conclude: It is a dictionary word therefore I must be safe
one can not conclude it is a TM therefore I am infringing.

that should finally become common knowledge

 

[EmotiveDomains]

I'd never heard of AMEX using the name centurion before reading this thread.

 

[168]

That is actually an interesting question. The plain language reading says that only a "mark owner" (not a domain registrant) and bring an ACPA action absent a UDRP decision. Other people have implied that any type of forward complaint (a domain registrant can be sued under the ACPA by the mere registration of a domain without using it in commerce) then there is also a "reverse claim." Since a domain owner can be sued under the ACPA without otherwise using the domain in commerce can a domain owner sue a bad faith actor who tries to take a domain away in bad faith?

This reply is not intended as legal advise,
It is my understanding the domain owner can take this to court prior to UDRP to request injunctive relief in the absence of proof
owning the domain has caused the TM holder harm.

ACPA
under paragraph (1)(B)(vi) does not suggest that a court should
consider the mere offer to sell a domain name to a mark owner
or the failure to use a name in the bona fide offering of goods
or services is sufficient to indicate bad faith.

under paragraph (1)(B)(iv), a court may consider
the person's legitimate noncommercial or fair use of the mark
in a web site that is accessible under the domain name at
issue. This factor is intended to balance the interests of
trademark owners with the interests of those who would make
lawful noncommercial or fair uses of others' marks online, such
as in comparative advertising, comment, criticism, parody, news
reporting, etc. Under the bill, the use of a domain name for
purposes of comparative advertising, comment, criticism,
parody, news reporting, etc., even where done for profit, would
not alone satisfy the bad-faith intent requirement. The fact
that a person may use a mark in a site in such a lawful manner
may be an appropriate indication that the person's registration
or use of the domain name lacked the required element of bad-
faith.
courts have found a defendant's offer to
sell the domain name to the legitimate mark owner as being
indicative of the defendant's intent to trade on the value of a
trademark owner's marks by engaging in the business of
registering those marks and selling them to the rightful
trademark owners. It does not suggest that a court should
consider the mere offer to sell a domain name to a mark owner
or the failure to use a name in the bona fide offering of goods
or services is sufficient to indicate bad faith. Indeed, there
are cases in which a person registers a name in anticipation of
a business venture that simply never pans out. And someone who
has a legitimate registration of a domain name that mirrors
someone else's domain name, such as a trademark owner that is a
lawful concurrent user of that name with another trademark
owner, may, in fact, wish to sell that name to the other
trademark owner. This bill does not imply that these facts are
an indication of bad-faith. It merely provides a court with the
necessary discretion to recognize the evidence of bad-faith
when it is present.

 

[168]

I'd never heard of AMEX using the name centurion before reading this thread.

Exactly.
I don't think it meets the "distinctive" requirement since there are several hundreds of other TM's that include the term

 

[shopman]

I'd never heard of AMEX using the name centurion before reading this thread.

For whatever it is worth, AMEX doesn't even use centurion.com for a "standalone" website. It redirects it to a page on americanexpress.com. Can it reasonably argue that a domain name like centurion.shop will be confusingly similar or infringing on its rights when virtually all its customers consider its main and only web address to be americanexpress.com and not centurion.com?

 

[dordomai]

For whatever it is worth, AMEX doesn't even use centurion.com for a "standalone" website. It redirects it to a page on americanexpress.com. Can it reasonably argue that a domain name like centurion.shop will be confusingly similar or infringing on its rights when virtually all its customers consider its main and only web address to be americanexpress.com and not centurion.com?

i think confusingly similar applies to the mark not the url.

 

[shopman]

i think confusingly similar applies to the mark not the url.

You are right but when complainants talk about marks being confusingly similar, it often covers the URL by extension.

To put it differently, what is the likelihood that an AMEX customer looking for a centurion card service is going to type in centurion.shop? It is virtually zero, especially in this case where the brand is not even using the name in dispute on its official website in the first place.

 

[dordomai]

You are right but when complainants talk about marks being confusingly similar, it often covers the URL by extension.

To put it differently, what is the likelihood that an AMEX customer looking for a centurion card service is going to type in centurion.shop? It is virtually zero, especially in this case where the brand is not even using the name in dispute on its official website in the first place.

it is not just the URL that matters to them. you are not in any way protected because they do not use it for their main site.

if your domain is confusingly similar to their mark that is all that is needed to infringe.

 

[shopman]

if your domain is confusingly similar to their mark that is all that is needed to infringe.

Not really. It is much more complex than that. They have to consider bad faith, legitimate rights etc.

Even on the question of being "confusingly similar", panelists don't just stop at that and decide in complainant's favour because names are confusingly similar. They go further and determine plausibility(how practical?) of an end user actually mistaking the name in dispute for the complainant's name. In this case, it is really impossible for a user to mistake centurion.shop for americanexpress.com or for centurion.com.

 

[Cdomains]

The biggest mistake you made was posting the name on this thread and not obfuscating it.

Soon Google will index this thread and the content will be searchable.

Things you have posted and / or "admitted to" will be available for AMEX to use against you in a UDRP or even if they pursue this in court.

Even if you are in the right here you are in for a hard time as you are going up against a huge company with unlimited assets at their disposal.

Even if you win a UDRP, and defend it yourself, if you can't afford a lawyer, you will most definitely need a lawyer if you are taken to court.

This will prove to be quite expensive for you as I am sure AMEX has lawyers on staff that will keep this case going until you can no longer afford to pay your lawyer to defend it.

Do you think this name is valuable enough to warrant the cost of defending it?

Something to think about if AMEX continues to press you on this.

Whether you are in the right or not may not matter if you are ultimately taken to court and are forced to pay for an expensive defense.

 

[robert widener]

like I said , tell amex to kiss your you know what . they cant win this fight . the domain CENTURION.SHOP doesn't conflict with the amex trademark . if he was using the site for financial services / transactions ( ex. credit cards ,etc ) then yeah he would be in violation , amex is just trying to scare you into giving up the domain , big companies do it all the time . amex is wrong on this one , tell em ' to cease & desist the letters & tell them if they want it to take it to a udrp panel ( which they might ) . don't let amex bully you into giving up the domain .

 

[shopman]

The biggest mistake you made was posting the name on this thread and not obfuscating it.

Everything I "admitted" here is totally defensible in a UDRP.

Do you think this name is valuable enough to warrant the cost of defending it? Something to think about if AMEX continues to press you on this. Whether you are in the right or not may not matter if you are ultimately taken to court and are forced to pay for an expensive defense.

Can you show me examples where a company went on to seize a domain name via a court process after losing a UDRP? What were the circumstances? All I have to do is win UDRP. That will cost me $0.

If AMEX will spend tens of thousands of dollars trying to seize a $6 domain name, then someone there needs to have their heads examined. If it gets costly, I know when to ship out . But right now, I am within my rights to defend a legitimate domain registration.

 

[shopman]

amex is just trying to scare you into giving up the domain , big companies do it all the time . amex is wrong on this one , tell em ' to cease & desist the letters & tell them if they want it to take it to a udrp panel ( which they might ) . don't let amex bully you into giving up the domain .

Thanks. That is my assessment, too. That is why I have stood my ground.

 

[Cdomains]

Everything I "admitted" here is totally defensible in a UDRP.

Since you are not a lawyer it is foolish to think what you say here definitely would not matter in a UDRP or in court.

Can you show me examples where a company went on to seize a domain name via a court process after losing a UDRP?

Over the years I have read of several cases where a case was brought to court after a UDRP, and even instead of a UDRP.

I can't remember the details of specific cases, but I do remember reading about a few of these cases.

Maybe it was posted at Domain Name Wire, I am not sure, but this is a great source if you are interested in this kind of thing.

You should check it out, it might have some useful info for you.

 

[shopman]

Ok, here is the final word. They just emailed me:-

Dear Sam,

Thank you for your reply. We have closed our file on this matter.

Sincerely,

American Express Trademark Enforcement

So case closed and I get to keep my domain name

 

[dordomai]

good.. case closed.

 

[shopman]

Check my previous message. Case closed

 

[Cdomains]

Ok, here is the final word. They just emailed me:-

Dear Sam,

Thank you for your reply. We have closed our file on this matter.

Sincerely,

American Express Trademark Enforcement

So case closed and I get to keep my domain name

Fantastic!!

You lucked out.

Good for you!!

 

[robert widener]

good.. case closed.

edit

 

[robert widener]

Check my previous message. Case closed

nice , way to stick to your guns , too many people get something like that from a big company & they start shaking in their shoes . glad to see the case closed , centurion.shop was in no way an infringement on their trademark

 

[shopman]

So this is AMEX's "third strike". Third time on record they tried to seize a "centurion" domain and failed/given up. As long as you can prove fair use, I don't think there is much to worry about.

 

[tldboss]

..

This will prove to be quite expensive for you as I am sure AMEX has lawyers on staff that will keep this case going until you can no longer afford to pay your lawyer to defend it.
...

Agree with this statement.
I think Its more of a warning, doubt they made a mistake. You just need to be careful how use the domain going forward.

You stood up for yourself, well done. The first letter would have been sufficient for me to drop/give up the name.

Glad the case is closed. Now, you can continue blogging about the Centurion city in peace

 

[decades80]

As others have mentioned, go ahead and develop your blog as you want to, as you have a passion about Centurion. Even if you defend your name in UDRP, be sure Amex Centurion will not express any interest in buying it afterwards, since you cant monetize it with the most plausible option, I believe you should keep blogging about Centurion in the future and try to earn money for domain and hosting with some Centurion city adds, which will be a hard thing to do, since I expect that only a handful amount of people search for the city of Centurion each month on Google

Amex centurion will simply wait that you get bored with blogging and drop the domain name in 10 or 20 years. They are very patient in those matters....

 

[campout]

Wow. Ground = stood.

 

[consumers]

This reply is not intended as legal advise,
It is my understanding the domain owner can take this to court prior to UDRP to request injunctive relief in the absence of proof
owning the domain has caused the TM holder harm.

ACPA
under paragraph (1)(B)(vi) does not suggest that a court should
consider the mere offer to sell a domain name to a mark owner
or the failure to use a name in the bona fide offering of goods
or services is sufficient to indicate bad faith.

under paragraph (1)(B)(iv), a court may consider
the person's legitimate noncommercial or fair use of the mark
in a web site that is accessible under the domain name at
issue. This factor is intended to balance the interests of
trademark owners with the interests of those who would make
lawful noncommercial or fair uses of others' marks online, such
as in comparative advertising, comment, criticism, parody, news
reporting, etc. Under the bill, the use of a domain name for
purposes of comparative advertising, comment, criticism,
parody, news reporting, etc., even where done for profit, would
not alone satisfy the bad-faith intent requirement. The fact
that a person may use a mark in a site in such a lawful manner
may be an appropriate indication that the person's registration
or use of the domain name lacked the required element of bad-
faith.
courts have found a defendant's offer to
sell the domain name to the legitimate mark owner as being
indicative of the defendant's intent to trade on the value of a
trademark owner's marks by engaging in the business of
registering those marks and selling them to the rightful
trademark owners. It does not suggest that a court should
consider the mere offer to sell a domain name to a mark owner
or the failure to use a name in the bona fide offering of goods
or services is sufficient to indicate bad faith. Indeed, there
are cases in which a person registers a name in anticipation of
a business venture that simply never pans out. And someone who
has a legitimate registration of a domain name that mirrors
someone else's domain name, such as a trademark owner that is a
lawful concurrent user of that name with another trademark
owner, may, in fact, wish to sell that name to the other
trademark owner. This bill does not imply that these facts are
an indication of bad-faith. It merely provides a court with the
necessary discretion to recognize the evidence of bad-faith
when it is present.

I am discussing the situation where the domain registrant does not have a trademark, just a domain registration. The plain language of the ACPA does not seem to permit that unless you also have a trademark:

(d) Cyberpiracy prevention
(1)
(A) A person shall be liable in a civil action by the *owner of a mark*, ... It does not say "domain name registrant"
--
15 U.S.C. § 1114 allows domain registrants to take action but only after an averse UDRP decision. There was a case where someone tried to take an action beforehand and it was dismissed:

(iv)
If a registrar, registry, or other registration authority takes an action described under clause (ii) based on a knowing and material misrepresentation by any other person that a domain name is identical to, confusingly similar to, or dilutive of a mark, the person making the knowing and material misrepresentation shall be liable for any damages, including costs and attorney’s fees, incurred by the domain name registrant as a result of such action. The court may also grant injunctive relief to the domain name registrant, including the reactivation of the domain name or the transfer of the domain name to the domain name registrant.
(v)
A domain name registrant whose domain name has been suspended, disabled, or transferred under a policy described under clause (ii)(II) may, upon notice to the mark owner, file a civil action to establish that the registration or use of the domain name by such registrant is not unlawful under this chapter. The court may grant injunctive relief to the domain name registrant, including the reactivation of the domain name or transfer of the domain name to the domain name registrant.