i have got this mail Re: American Express Company’s Objection to Registration of amextraders.com (Our Reference 308637) Dear Mr. Husain: We represent the American Express Company in matters involving trademarks and unfair competition. It has come to our attention that you have registered the domain name amextraders.com with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com, and are using the URL in connection with a website offering trading services and manufacturing products such as crushed bones, garments etc. Please be advised that our client is the owner of a federal trademark registration for AMEX, specifically Registration No. 1,161,278 registered on July 14, 1981. American Express began using the AMEX mark in 1969, and has continuously and extensively used and advertised its AMEX trademark since that time, making the AMEX mark famous in the United States and worldwide. As such, the AMEX trademark is a valuable asset of our client, one it will take all reasonable steps to protect. Unauthorized registration and/or use of AMEX and amextraders.com is likely to cause confusion, mistake, or to deceive the public and is a violation of our client’s federally-protected rights under 15 U.S.C. §§ 1114 and 1125. Indeed, the registration of amextraders.com appears to be clearly intended to falsely create the impression that American Express is the owner of or associated with this domain name. Further, misuse of our client’s famous mark for commercial gain is further evidence of your bad faith use and infringement of our client’s mark. Additionally, under 15 U.S.C. §1125(d) a domain name registrant is liable in a civil action if the registrant of the domain name has a bad faith intent to profit from registration of the trademark as a domain name and registers, traffics in, or uses a domain name that is identical or confusingly similar to another party’s trademark or dilutes a famous trademark. Further, the trademark owner can recover damages of $1000 to $100,000 per domain name registration. Your registration of the amextraders.com domain name with constructive knowledge of our client’s famous AMEX mark constitutes bad faith use of the domain name. In the ICANN STOP decision of American Express Company v. Swarthmore Associates, LLC, FA0204000110759 (NAF July 10, 2002), the panel held that the domain name owner registered the domain name in bad faith due to its constructive knowledge of the American Express Company’s AMEX trademark and found that “there is possibility, even probability, of confusion.†Accordingly, your mere registration of the amextraders.com domain name is actionable under the Uniform Dispute Resolution Policy and no further use of the domain name is even necessary for our client to bring an ICANN complaint against you at this time. We request that within 10 days the amextraders.com domain name registration be expressly withdrawn from Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com, and that you cease and desist all current and future use of amextraders.com, or anything else confusingly similar thereto, in connection with a domain name or in any other manner. We look forward to hearing from you within 10 days so that this matter can be resolved. Should you have any questions, please contact the undersigned. Very truly yours, Anne E. Naffziger LEYDIG, VOIT & MAYER, LTD. 1420 Fifth Avenue, Suite 3670 Seattle, Washington 98101 206-428-3102 (direct phone) 312-616-5700 (fax) www.leydig.com What should i do please reply ASAP.
You'll probably have to give them the domain. There's nothing really much you can do, they own the trademark.
premiumscripts oh, you know googlecash.com? google is trademark of google.inc What now???????????????????????????
Your biggest problem is that Amex do have traders in forex within their organization. Amex may believe that you can confuse visitors with their trademark. They will definately succeed in a claim against you for this domain.
What now? Unless you secured permission from AMEX for usage of their mark, there's little to no way you can continue using that domain without objection. Least they can do is file what's called a UDRP (just search in Google) and lose the domain name. Worse they can do is file a lawsuit under ACPA (also search in Google) itself, secure a judgment, and both get the domain and have some money damages against you. It's an open question whether they'll be able to enforce that legal decision on you, assuming they win. But I'm not sure how many people are willing to have that kind of "mark" on them. If you search, say, amex on Google, what results do you think come up? What is the likelihood people won't confuse your site with theirs? Or most importantly, why did you register that domain name anyway?
They have trademark rights in the field of financial services. He is representing a company that trades in bone products. Some confusion in this forum may arise from the different use of the word "trading" in various parts of the world. In India it's normal to use that for anyone who is selling something, whereas in the US it's more likely to connote stock trading etc. In any case, I disagree with people who think he will lose the domain. They don't have much claim as he is not operating in the same line of business and has done nothing to create brand confusion. I recommend those who are interested to read the copious materials at http://www.chillingeffects.org/ covering this type of situation. If he were operating a financial services company, or had tried to sell the domain to American Express, it would be very different. But neither of those is the case so far as I can see.
One problem here is Amex is arguably a famous mark along the lines of Google, Microsoft, etc. Like I asked earlier, what are the chances users won't confuse the OP's site with the financial services provider? While that's Amex's burden to demonstrate, they are more or less ready to do so.
They've won a case on "American Express" but never, to my knowledge, "Amex". To me that's a much harder sell, and it seems unlikely that they'll pick this day to launch their new watershed case. Also the notion of a famous mark also incorporates visual presentation. OP is not in any way mimicing American Express' logo. And we're looking at 4 letters used as part of a larger name. Do you suppose they'll go after my domain "amexicanrestaurant.com" next? Pretty much 100%. Have you been to OP's site?
Maybe not. While it also incorporates visual presentation as you said, it isn't the only factor determining that. There will be other ones involved: date of registration, OP's intent, how users likely perceive the domain to be similar, etc. Technical details matter if/when they matter. This is probably too simple, but it boils down to likelihood of confusion. If the AMEX people are prepared to show that, then the OP is quite in trouble. And yes, I've been to his site. While you can argue users 100% won't confuse the OP's site with AMEX, I'd argue that some might do so. To give an example, look up the eBay v. PerfumeBay dispute. The PerfumeBay lady originally confirmed they've had people ask if they're eBay, and it wasn't even 100%. Coupled with eBay demonstrating their cause, and the PerfumeBay lady later lost her case. She eventually switched to another brand of her own, and she seems to be doing well. Of course, none of our arguments really matter if AMEX decides to force this all the way. And their site indicates they have an office in the OP's area also. I for one, though, do hope both AMEX and the OP somehow work things out.
IMHO, if I were you, I will just follow their instructions. It is far more expensive and time taking to defend your position especially against such companies who have the financial muscles to go through the legal process.
Well, one other thing to consider; he doesn't live in the USA. Would that help in his defense in any way?
American Express has a presence in India. But the most realistic concern is simply that they'd go through ICANN to try to get the domain. Even that seems like a long shot in this situation though.
amex ownes amextrader.com amextrade.com is up for sale and parked so i think its safe to park before you you try to use for something which can be taken against you when it comes to litigation, they have a say. thatz for sure.
Remember also that different businesses can have similar names. Not everything called McDonalds is a takeaway! People with the surname McDonald also use it for their businesses, and can do so without any dispute. Just look at something like mcdonaldsdesignandbuild.com and a thousand others like it. AmexTraders though is a bit iffy because it creates the impression that is connected with American Express. But you could probably get away with something more specific like AmexIndianGlassware.com or some other specific trade name which quite clearly has nothing to do with the cc corporation. Or to be silly AmexIcanShop.com (=a mexican shop).