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Generic Top Level Domain Name (gTLD) Decisions |
American Express Company v. Centurion
Holding Ltd. Peter Laskaris
Claim Number: FA0407000305479
PARTIES
Complainant
is American Express Company (“Complainant”),
represented by Dianne K. Cahill, 200 Vesey Street, 49th Floor, New
York, NY 10285. Respondent is Centurion Holding Ltd. Peter Laskaris (“Respondent”),
Suite B, 29 Harley Street, London, W1G 9QR UK.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <centurion.cc>
(the “Domain Name”), which is registered with The eNIC Corporation (“the Registrar”).
PANEL
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known
conflict in serving as
Panelist in this proceeding.
Michael
A. Albert as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on July 29, 2004; the Forum received
a hard copy of the
Complaint on July 30, 2004.
On
July 29, 2004, The eNIC Corporation confirmed by e-mail to the Forum that the
domain name <centurion.cc> is
registered with The eNIC Corporation and that the Respondent is the current
registrant of the name. The eNIC
Corporation has verified that Respondent is bound by the The eNIC Corporation
registration agreement and has thereby agreed
to resolve domain-name disputes
brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute
Resolution Policy
(the “Policy”).
On
August 4, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of August 24,
2004 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail,
post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts,
and to postmaster@centurion.cc by e-mail.
A
timely Response was received and determined to be complete on August 23, 2004.
On September 1, 2004, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Michael A.
Albert as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
contends as follows:
-
that it has been using the mark CENTURION since 1978 for a variety of financial
and travel-related services;
-
that the CENTURION card is American
Express’s premier card product and a symbol of its commitment to quality and
excellence;
- that American Express has 77 trademark
registrations and/or applications in 30 countries around the world for the
CENTURION mark,
including in the United Kingdom, where Respondent is located;
- that Complainant has over 60,000,000 cardholders,
has in a recent year grossed nearly $26 billion in revenue and spent nearly
$1.5
billion in advertising;
- that the relevant part of the disputed Domain
Name is identical to Complainant’s CENTURION mark;
- that Respondent has no legitimate rights or
interests in the mark as it does not own any trademark registrations or
applications
for the Domain Name;
- that Respondent seeks to trade on the goodwill
associated with the fame of Complainant’s mark;
- that Respondent
is using the Domain Name in connection with an adult content web site offering
“companion” or escort-type services, and
that the site goes on to offer links
to other sites, some of which have pornographic content;
-
that American Express also uses and has over 130 trademark registrations in 75
countries around the world, including the United
Kingdom, for its CENTURION
head design or logo;
-
that the images in the upper corners of Respondent’s web site are copies of the
American Express Centurion head logo;
-
that Respondent’s web site has the same look and feel as the American Express
Centurion® Card with its CENTURION head design with
platinum and black coloring
and lettering;
-
that consumers accessing Respondent’s site are likely to be confused as to
whether the site is affiliated with American Express,
and further that
Complainant’s trademarks are likely to be diminished, diluted, or tarnished by
association with Respondent’s adult-content
web site.
B.
Respondent
Respondent’s
contentions are as follows:
-
that there are hundreds of “Centurion” companies around the world, many of
which use a centurion head in their design, and many
of which have top-level
domains containing the word “centurion”; including notably
<centurion.com> and <centurion.net>,
neither of which appears to be
affiliated with Complainant;
-
that Respondent chose the name “centurion” not because of Complainant’s
“Centurion” card or mark but “because of the great history
of the old roman
centurions, which stand for the philosophies of our operations”;
-
that Centurion Holdings Ltd. is a legal and licensed operation with
subsidiaries active in the adult entertainment industry in the
U.K. and
Austria, and that its businesses accept Complainant’s credit cards and make
substantial payments to Complainant for this
service;
-
that Respondent plans to “relaunch” a new web site and new services by the end
of September 2004, such that it will change the design,
including the centurion
head logo, and that the new web site will eliminate any possibility of
confusion between the site and American
Express.
FINDINGS
A “centurion” is defined in Webster’s
Ninth New Collegiate Dictionary as “an officer commanding a Roman century,”
where a “century”
is further defined as 100 troops.
Perhaps because of the commanding imagery
of leadership, valor, or prowess that this term connotes, numerous entities in
various lines
of business appear to have adopted the mark CENTURION. For example, the domain name
<centurion.com> resolves to the web site of Centurion Wireless
Technologies, Inc., which describes
itself as a leading global provider of
antennas and power products, while <centurion.net> is the Internet home
of Centurion
Security Systems, Ltd., which describes itself as one of the
U.K.’s leading specialists in commercial integration of alarm and access
control systems. Also in the U.K., the
company whose site is located at <centurion-riskservices.co.uk> claims to
be the world’s leading risk
assessment training company. A home cleaning company’s online presence is
at <centurionservices.com>, whose home page also features what appears to
be the
image of a Roman centurion’s head and torso holding an outstretched
sword. In France, <centurion.fr>
resolves to the site of an aluminum tubing company. Closer to the services offered by Complainant is
<centurionbank.com>, which appears to belong to a bank in India. In the United States, Centurion Insurance
Group operates at the domain name <centcorp.com>, and features a logo of
what appears
to be a Roman centurion’s helmet.
A number of “centurion clubs” located around the world can be located at
<http://home.vicnet.net.au/~austcent/centworl.html>,
where a “centurion”
is defined as someone who has walked 100 miles within 24 hours. At <centurionenergy.com>, Internet
users will find a Canadian oil and gas company featuring a centurion-head
logo.
Respondent has identified numerous other
examples of companies or organizations with “centurion” in their names, and in
some cases
using a centurion head image.
Notwithstanding the numerous above uses,
there can be no doubt that Complainant, the American Express company, has built
up considerable
goodwill and brand recognition in its CENTURION trademark, used
in connection with financial and travel services, in numerous locations
around
the world. Unfortunately, the data it
provides regarding cardholders, sales, and revenues does not break out the
figures for the Centurion-branded
products as opposed to all other products,
making it difficult to draw any conclusions about the strength of that
particular mark,
as opposed to others owned by Complainant. Nevertheless, it can reasonably be inferred
from the evidence that such sales and revenues are substantial. Moreover, Complainant’s ownership of
numerous trademark registrations gives it presumptive rights in such marks, and
nothing in Respondent’s
submission calls these rights into question.
At issue, therefore, is whether the
particular use made by Respondent of its <centurion.cc> domain
name reflects a legitimate business use by Respondent, and if not, whether its
registration and use have been shown by Complainant
to have been in bad faith
as defined in the Policy.
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the “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 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.
Complainant
asserts that it has established rights in the CENTURION mark by registering it
in thirty countries around the world, including
with the United States Patent
and Trademark Office (Reg. No. 1,096,266 issued on July 11, 1978 and Reg. No.
2,488,068 issued on September
11, 2001).
See Men’s
Wearhouse, Inc. v. Wick,
FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law,
registered marks hold a presumption that they are inherently
distinctive and
have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive, and
that respondent has the
burden of refuting this assumption). While Respondent appears to be headquartered
in either the U.K. or Austria, neither party has suggested that the applicable
law of
either of those countries differs on this point, even assuming that such
law, rather than the law of the U.S. (where Complainant
is headquartered), were
applicable.
Use of a term in a business context might
not create trademark rights if that term were generic. While “centurion” is a “dictionary word,” it
cannot of course be generic in the context in which Complainant uses it, namely
the provision
of financial or travel-related services, since the meaning of
“centurion” has little or no obvious connection to such services, and
certainly
is not a descriptor of such services.
Accordingly, Complainant has established that it owns trademark rights
in the mark.
Disregarding, as we must, the top-level
domain (which in this case is “.cc”), the Domain Name is identical to
Complainant’s trademark. See Shirmax Retail Ltd. v. CES Mktg. Group Inc., AF-0104
(eResolution Mar. 20, 2000) (holding that “mere identicality of a domain name
with a registered trademark is sufficient
to meet the first element [of the
Policy], even if there is no likelihood of confusion whatsoever”); see also
Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name
such as “.net” or “.com” does not affect the domain
name for the purpose of
determining whether it is identical or confusingly similar).
Accordingly, Complainant plainly meets
its burden of proof as to the first element.
The next issue is whether Respondent has
any rights or legitimate interests in the Domain Name. Respondent claims to be known by the mark
and to be using it in connection with a legal line of business. Complainant suggests that the use of a
domain name identical to Complainant’s CENTURION mark to redirect Internet
users to an adult-oriented
commercial website is not a use in connection with a
bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a
legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Indeed, there are decisions under the Policy
that support such a conclusion. See
Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002)
(holding that the use of a domain name that is confusingly similar to an
established mark
to divert Internet users to an adult-oriented website
“tarnishes Complainant’s mark and does not evidence noncommercial or fair use
of the domain name by a respondent”); see also Isleworth Land Co. v.
Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that
Respondent’s use of its domain name to link unsuspecting Internet
traffic to an adult-oriented website, containing images of scantily clad women
in provocative
poses, did not constitute a connection with a bona fide offering
of goods or services or a noncommercial or fair use).
Even if it were not for the inclusion of
adult material, adopting a domain name for the purpose of confusion with an
established trademark,
and attempting thereby to steer Internet traffic to an
unrelated business, would undermine a claim that the respondent was making
a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant
to Policy
¶ 4(c)(iii). See U.S.
Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that Respondent’s use of
Complainant’s mark and the goodwill surrounding that mark as a means of
attracting Internet users
to an unrelated business was not a bona fide offering
of goods or services); see also Toronto-Dominion
Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that,
because Respondent's sole purpose in selecting the domain names was to cause
confusion with Complainant's
website and marks, its use of the names was not in
connection with the offering of goods or services or any other fair use); see
also MSNBC Cable, LLC v. Tysys.com,
D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in
the famous MSNBC mark where Respondent attempted to
profit using Complainant’s
mark by redirecting Internet traffic to its own website).
On the other hand, the mere similarity of
a respondent’s domain name to a complainant’s trademark, unsupported by
evidence of intent
to trade on the goodwill of the complainant, would not be a
sufficient basis under the Policy to find that Respondent lacks a right
or
legitimate interest in its domain name.
Here, while the case is a close one as a
result of the presence of some similarities in coloring and in use of the
centurion-head
imagery between the Respondent’s web site and the Complainant’s
credit card, the Panel is not persuaded that Complainant has met
its burden of
proof to establish that Respondent lacks rights or legitimate interests in the <centurion.cc>
Domain Name.
First of all, Respondent apparently runs
a business under the name Centurion Holdings Ltd. On the surface, at least, that seems to suggest “legitimate” use
of the mark, absent clear evidence that the mark was adopted in order
to trade
on Complainant’s goodwill. As
Respondent correctly notes, a significant number of other companies appear to
have established themselves under the CENTURION mark,
or a mark containing that
term, as well. Several of them use centurion
heads, helmets, or related logos.
Indeed, a search of the U.S. Patent and Trademark Office database
indicates that some 276 registrations or applications exist (of
which 109 are
live) for marks that are or contain the word “centurion.” While a handful of these appear to belong to
Complainant, the great majority does not.
Plainly there are other legitimate businesses which use this mark.
Secondly, the Panel has been offered
little evidence that would show that Respondent’s choice of mark was designed
to confuse consumers
seeking out Complainant’s web site. As an initial matter, the likelihood that an
actual or potential customer of American Express’s CENTURION® card would assume
that
the relevant Web address was located at the “.cc” top-level domain, which
is the country code for the Cocos (Keeling) Islands, a
territory in the Indian
Ocean with some 700 inhabitants, seems relatively small. More significant than this, however (since
intent to misappropriate goodwill can certainly be shown, in appropriate cases,
regardless
of what top-level domain is used), is the absence of evidence
establishing that Respondent has misstated its intent in adopting the
Domain
Name. Respondent claims that the
“Centurion” name evokes an image relevant to its adult-entertainment
business. One need not venture too far
into ancient Roman history to learn that centurions were symbols of virility
and that at least some centurions
had a reputation as womanizers. Leaving aside, as we must, any moral
judgment on the nature of Respondent’s business, it does appear that there is a
logical connection
between that choice of name and the nature of the business
that Respondents are engaged in.
Third, there is little if any connection
between the nature of Complainant’s business and the nature of Respondent’s
business. Respondent’s business is no
more related to Complainant’s than are the many other businesses that use
“centurion” in their names. Indeed,
many of those services (e.g. banking, insurance) seem more closely related to
Complainant’s, and more likely to be confused
or associated with it, than does
Respondent’s business. Accordingly, the
likelihood of consumer confusion between the two services seems small, at least
based on the limited record before
the Panel.
Nothing herein is intended to prejudge whether Complainant might
establish, in an appropriate forum and with appropriate access to
evidence, a
likelihood of confusion sufficient to prove trademark infringement or
dilution. It is not the role of this
Panel, however, to hear or resolve trademark disputes, except to the limited
degree necessary to determine
whether the factors set forth in the Policy have
been established by Complainant.
The most troubling aspect of Respondent’s
usage, in assessing its legitimacy, is, as Complainant suggests, that there are
some similarities
between the “look and feel” of respondent’s web site and the
“look and feel” of Complainant’s CENTURION® credit card. In particular, both products make use of a
centurion-head logo, and both make use of what Complainant calls a black and
silver (or
at other times black and platinum) color scheme.
As to the logo, Complainant asserts that
“the images in the upper corners of the centurion.cc web site are copies of the
American
Express Centurion head design.”
That assertion, however, is not supported by the pictures shown in the
Complaint. In those pictures, it
appears that the particular depiction of a centurion head used by Respondent is
not a copy of, or even substantially
similar to, the particular centurion-head
picture used by Complainant. The two
images, although both references to a Roman centurion, depict that theme in
different ways. Respondent’s image is a
more stylized representation, while Complainant’s is a more realistic depiction
of an actual face and helmet. Numerous
other details differ between the two pictures such that no impartial observer
would refer to one as a “copy” of the other.
While direct (or near-direct) copying of Complainant’s actual logo would
have led to a different conclusion, the mere fact that Respondent
uses a
centurion-head image – as do several other companies with “centurion” in their
names – does not establish that it deliberately
adopted a design similar to
Complainant’s, given that the pictures in question are quite dissimilar.
As to the color scheme, Complainant’s
CENTURION credit card and Respondent’s web site both use a black background
with what appears
to be silver or platinum (though some might call it white or
off-white) lettering. While the two
color schemes indeed have some similarity, Complainant does not claim or
establish that it owns any trade dress protection
for this color combination,
nor does it offer evidence as to the frequency (or rarity) of such a color
combination in web sites. While a close
question, this fact does not strike the Panel as so clearly an adoption of a
distinctive or unique set of colors as
to form the basis for a finding of a
lack of any legitimate commercial interest.
A white-on-black color scheme is not uncommon for web sites,
particularly sites which feature photography.
In sum, Complainant has not proven that
Respondent lacks any rights or legitimate interests in the Domain Name. Respondent appears to be running a legal
business, substantially different in nature from Complainant’s business, under
the CENTURION
trademark. While
Complainant unquestionably has rights in that mark, such rights do not preclude
the possibility of others having rights in it
as well. Indeed, the mark is in use by a large number
of other businesses around the world, many of whom have domain names containing
that
mark. Based on the meaning and
connotations of the mark, it is plausible that Respondent might have considered
the mark to be appropriate
and relevant to its business. While the look and feel of Respondent’s web
site leaves room for suspicion as to whether it sought to trade on
Complainant’s goodwill,
that conclusion is not clearly enough established by
the evidence before the Panel to warrant a finding that Respondent’s business
is not “legitimate” as defined in the Policy.
Because Complainant has not met the
second element of its proof, as discussed above, there is no need for the Panel
to reach the question
of whether Respondent’s conduct was in bad faith. The analysis of the “bad faith” factor, in
any event, would turn on some of the same issues discussed above in the context
of “legitimate
use.” Complainant does
not offer any direct evidence of bad faith, but suggests that bad faith can be
“inferred” from the similarities discussed
above taken together with the fame
of Complainant’s mark. The Panel,
however, finds, at least on the present record, that it is plausible that
Respondent adopted its <centurion.cc> domain name and imagery for
reasons relating to the association it perceives between Roman centurions and
Respondent’s adult-entertainment
business, rather than as a deliberate attempt
to trade off of Complainant’s goodwill.
Respondent’s
Representation Regarding Changing Its Web Site
The Panel notes that, in the course of
responding to the Complaint, Respondent represented to the Complainant and to
the Panel that
by the end of September 2004 it would have a new web site in
operation at the disputed Domain Name that would eliminate any risk
of
confusion by removing the centurion-head logo and making other appropriate
changes. While Respondent’s intent is
not the basis for this Decision, the Panel takes Respondent at its word and
presumably Complainant does
as well.
Should Respondent fail to live up to this representation, nothing herein
should be deemed to preclude further action, either under
the Policy or under
appropriate legal authority.
DECISION
As
Complainant has not established all three elements required under the ICANN
Policy, the Panel concludes that the requested relief
shall be DENIED.
Michael A. Albert, Panelist
Dated: September 27, 2004
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