[Indexed as:
Cable News v. Manchester Trading]
[Indexed as:
CNNHEADLINENEWS.COM]
National Arbitration Forum
Forum File
No.: FA 93634
Commenced:
8 February 2000
Presiding Panelist: Robert R. Merhige, Jr.
Domain name Uniform Domain Name Dispute Resolution Policy Service mark Patent and Trademark Identical Confusingly similar Bad faith registration Bad faith use.
Complainant was registrant of United States Patent and Trademark and service mark. Respondent registered the domain name, CNNHEADLINENEWS.COM. Complainant alleged that the registered name was identical to its registered marks, and that the Respondent registered the domain name in bad faith.
Held, Name Transferred to Complainant.
Complainant must establish both bad faith registration and bad faith use.
The domain name CNNHEADLINENEWS.COM is identical or confusingly similar to the service mark and trademark, CNN and HEADLINE NEWS, registered and used by the Complainant. The Respondent has no legitimate rights in respect of the domain name. This is bad faith registration.
The Complainant is registered to use and has exclusively used the service marks, CNN, HEADLINE NEWS, and HEADLINE NEWS for more than two decades to identify its news and information services. The Respondent offered to sell the registered domain name to the Complainant for a sum well in excess of any reasonable out-of-pocket costs related to the name. The Respondent put no valid defence forward.
The Respondent also offered to sell other wrongfully registered marks to valid owners of properly registered names. Additionally, Respondent was using the name at issue to host banner advertisements intended to solicit traffic to its websites and the sites of several other parties. Clearly, these practices constitute bad faith use.
Policies referred to
Uniform
Domain Name Dispute Resolution Policy, adopted by ICANN on October
24, 1999
Anticybersquatting
Consumer Protection Act
Landham Act
FINDINGS
OF FACT AND CONCLUSIONS
The above
entitled matter came on for an Administrative Hearing this date, before
the undersigned on the Complaint of Cable News Network, LP, LLLP, ("Complainant")
against Respondent, Manchester Trading ("Respondent"). This matter has
been brought under the Uniform Domain Name Dispute Resolution policy adopted
by the Internet Corporation for assigned names and numbers ("ICANN") and
the rules for Uniform Name Dispute Resolution policy adopted by ICANN on
October 24, 1999. Complainant is represented by David J. Stewart, Esquire,
Alston & Bird, 1201 W. Peachtree Street, Altanta, GA 30309-3424; telephone
number (404) 881-7000; facsimile no. (404) 881-7777. Respondent, Manchester
Trading's, address is given as 634 Center Street, Manchester, Conn. 06040;
telephone number: (860) 643-2226, facsimile no.: (860) 649-5070.
Respondent's
contact as charged in the Complaint herein is given as Mike Jameson, Manchester
Trading, 634 Center Street, Manchester, Conn. 06040.
Finding the
Complaint to be in administrative compliance in accord with paragraph 4(a)
of the Rules for Uniform Domain Name Dispute Resolution, paragraph 4 of
the Supplemental Rules for Uniform Domain Name Dispute Resolution policy,
and in accordance with Rules paragraph 4(c), the formal date of commencement
of the administrative proceedings was established as February 8, 2000.
Accordingly, pursuant therewith, the Respondent was notified that it had
until March 2, 2000, to submit a response.
From the unrefuted
record, the undersigned finds the following facts:
The domain
name which is the subject of the Complaint is CNNHEADLINENEWS.COM registered
the Respondent with Network Solutions, Inc.
Complainant,
Cable News Network LP, LLP ("CNN") is one of the largest electronic news
and information companies in the world. It has for more than two decades
exclusively used the service marks CNN, HEADLINE NEWS, and HEADLINE NEWS
to identify its news and information services. Those services are and have
been available to more than one billion people worldwide through a number
of cable and satellite television networks (CNN, CNN Headline News, CNN
International, CNNfn, CNN/Sports Illustrated and CNN en Espanol).
Complainant
has submitted sworn statements to the effect that the service mark CNN
was adopted as early as 1980 and the subsequent marks CNN Headline News
and Headline News as early as 1982. Said marks have been continuously used
by it throughout the world to identify its news and information services.
Additionally, the undersigned has been afforded certified copies of registration
by the United States Patent and Trademark Office granting to the Complainant
the exclusive right to use the marks CNN (stylized) and HEADLINE NEWS.
The registrations are both valid and incontestable pursuant to Title 15
U.S.C. ß 1115(b), and constitute conclusive evidence of Complainant's
exclusive right to use said marks in commerce in the United States.
Additionally,
the record reflects that other trademark registration offices around the
world have recognized CNN's exclusive rights in the CNN marks by virtue
of said offices having granted registration marks.
The record
also reflects what would appear to be a Response to the Complaint dated
March 2, 2000, handwritten on a sheet of paper with a printed heading styled:
Manchester Trading, 634 Center Street, Manchester, CT 06040, phone 860/
643-2226; fax 860/ 649-5070; www.ManchesterTrading.com. The words contained
thereon are handwritten and reflect on the bottom what appears to be a
signature "M. L. Jamer," accompanied by what appears to be a sheet of a
printed form used for the filing of a domain name dispute complaint, as
utilized in the instant case. On one sheet is the hand-printed word "Answer."
That sheet is accompanied by four or five additional ones that appear to
have been blank, which now display hand-printed statements. These documents
which the undersigned assumes to be a response to the Complaint, contain
one or more conclusory statements such as "No bad faith, no extortions,
domain name not for sale." The sheets contain a number of additional statements
such as, "No bad faith, no reselling, not for sale, we have no exact trademark."
Additionally, one sheet contains the hand-printed words: "A. Unknown. B.
Unknown. C. ," as well as other verbiage which the undersigned accepts
as a denial of ever having "anyone call CNN." None of the response, consisting
of the above-described papers, constitutes a valid defense to the Complaint.
The evidence
reflects that the illegal use of the marks in issue came to the Complainant's
attention by an effort on the part of the Respondent to sell the infringing
domain name to it for a sum well in excess of any reasonable out-of-pocket
costs related to the name. The offer by Respondent to Complainant was,
as one would expect, refused, whereupon the amount of the offer to sell
was substantially reduced and refused as well.
The undersigned's
conclusion that the Respondent has acted in bad faith is solidified by
the fact that the evidence discloses that other valid owners of properly
registered names were solicited by the Respondent or his or its emissaries
seeking to purchase marks which had been wrongfully registered by Respondent
and were similar to what I find to be its intended customers.
Additionally,
the evidence reflects that at the time of the offer to sell the infringing
domain name, Respondent was using said name to host banner advertisements
intended to solicit traffic to its websites and the sites of several other
parties.
The record
reflects a substantial number of listings by Jameson, Manchester Trading
and other presumed commercial entities, all of which appear to be in association
with Jameson.
The testimony
taken in a deposition in connection with a claim against Jameson and another
individual describes him as being in a "viable internet" business. The
testimony further revealed that as of November 1999 no effort was made
to market products on or advertise in support of those domain sites.
The illegal
use of the marks in issue came to the Complainant's attention by an effort
of the part of the Respondent to sell the infringing domain name to it
for $8,875. The evidence shows that at least one other valid owner of properly
registered names was solicited by the Respondent or its emissary to purchase
marks which had been wrongfully registered by Respondent.
The named
Respondent, Manchester Trading, one of whose principals is Mike Jameson,
who appears to have allegedly engaged, through the Manchester Trading Company,
in conduct, which if true, is typical of the very conduct that Congress
by its recent enactment of the Anticybersquatting Consumer Protection Act,
Pb.L. 106-113 ("ACPA"). That Act was designed primarily to combat trademark
cyber piracy, and represents a new force against individuals who, as in
the instant matter, act in bad faith, register, traffic in, or use domain
names that are identical to, confusingly similar to, or, in some cases,
dilutive of existing marks.
The conduct
by the Respondent not only constitutes bad faith, but appears to be a violation
of the Landham Act, 15 U.S.C. ß 1225(c), as well as U.S.C. ßß
1114(1) and 1125(a).
For the reasons
herein stated and pursuant to the authority vested in the undersigned,
it is
DIRECTED that
the registration of the domain name CNNHEADLINENEWS.COM be forthwith transferred
to Cable News Network LP, LLLP ("CNN").
The undersigned
certifies that he has acted independently and has no known conflict in
serving as the arbitrator in this proceeding.
Robert R.
Merhige, Jr.
U.S.D.J. (Ret.)