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American Express Company v. Centurion Holding Ltd. Peter Laskaris [2004] GENDND 1154 (27 September 2004)


National Arbitration Forum

DECISION

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.

DISCUSSION

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.

Identical and/or Confusingly Similar

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.

Rights or Legitimate Interests

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.

Registration and Use in Bad Faith

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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