Cable News Network L.P., L.L.L.P. v. Cnnews.Com
| Decision Date | 21 December 2001 |
| Docket Number | No. 00-2022-A.,00-2022-A. |
| Citation | 177 F.Supp.2d 506 |
| Parties | CABLE NEWS NETWORK L.P., L.L.L.P., Plaintiff, v. CNNEWS.COM, Defendant. |
| Court | U.S. District Court — Eastern District of Virginia |
Janis R. Orfe, The Law Offices of Janis Orfe, P.C., Fairfax, VA, for Plaintiff.
Paul Edward Dietze, Pennie & Edmonds, Washington, D.C., for Defendant.
This is an in rem ACPA1 suit brought by an American company against a domain name used by a Chinese company in connection with a website that focuses chiefly on China and Chinese speakers by providing online services in the Chinese language. At issue on cross-motions for summary judgment are the following questions:
(1) whether this suit meets the ACPA's procedural requirements for an in rem action;
(2) whether the existing record establishes as a matter of law that plaintiff has proven the substantive elements of trademark infringement under 15 U.S.C. § 1125(a);
(3) whether the existing record establishes as a matter of law that plaintiff has proven the substantive elements of trademark dilution under 15 U.S.C. § 1125(c);
(4) whether a plaintiff in an ACPA in rem suit must prove that the registrant or user of the offending domain name acted in bad faith and, if so, whether that bad faith is established as a matter of law on the existing record;
(5) whether due process is violated by transferring ownership of a ".com" domain name from a Chinese company to an American company where as here, the domain name is used in connection with a website purporting to focus only on residents of China, but the domain name's situs is in this district; and
(6) whether an ACPA in rem action brought in this district by an American plaintiff against a domain name registered and used by Chinese entities doing business solely in China should be dismissed on forum non conveniens grounds where, as here, the disputed domain name's situs is in this district.
Plaintiff, Cable News Network L.P., L.L.L.P., is a Delaware limited liability limited partnership with its principal place of business in Atlanta, Georgia. It is engaged in the business of providing news and information services throughout the world via a variety of electronic media. It is also the owner of the trademark "CNN," which plaintiff has registered in this country,2 as well as in China.3 Since at least 1980, plaintiff has used its registered CNN trademark in connection with providing news and information services to people worldwide through a variety of cable and satellite television networks, private networks, radio networks, websites, and syndicated news services. Since adopting the CNN mark, plaintiff has used the mark "CNN" in the names of all of its broadcast networks, the best known of which include CNN Headline News, CNN En Espanol, CNNSI, CNNFN, and CNN International ("CNNI").4 Some of these services are accessible in China and are provided in the Chinese language.5 Plaintiff's services are also accessible worldwide via the Internet at the domain name "cnn.com."6 In light of plaintiff's longstanding, prominent, and worldwide use of the CNN mark, there is little doubt, and the parties do not dispute, that the CNN mark is well-known throughout Asia, including China.
Maya Online Broadband Network (HK) Co. Ltd. ("Maya HK") is a Chinese company that is a subsidiary of a second Chinese company, Shanghai Online Broadband Network Co. Ltd. ("Shanghai Maya"). The Chinese Internet Service Provider Tom.com owns a controlling share of Shanghai Maya's stock. On November 12, 1999, Maya HK's general manager, Heyu Wang, listing himself as registrant, registered the domain name "cnnews.com" with Network Solutions, Inc. ("NSI"), a domain name registrar and registry7 located in Herndon, Virginia.8 Maya HK, Wang's employer and the respondent in this action, subsequently licensed the cnnews.com domain name to its parent company, Shanghai Maya. Under the terms of the licensing agreement between Maya HK and Shanghai Maya, Maya HK earns royalties from Shanghai Maya's use of the cnnews.com domain name.
The cnnews.com website was designed and operated by Shanghai Maya to provide news and information to Chinese-speaking individuals worldwide. This website is part of Shanghai Maya's comprehensive online services system that includes video on demand, broadband services, and a variety of e-business services. The cnnews. com website is one of many sites, including cnnav.com and cnsport.com, that are linked to Shanghai Maya's main website, cnmaya.com. The cnmaya.com website makes significant use of the terms "cnnews" and "cnnews.com" as brand names, including use of logos that plaintiff contends resemble its logos. Furthermore, among the news articles posted on the cnnews.com and cnmaya.com websites are numerous articles that reference plaintiff's mark and its news reports and stories.
Early in this litigation, Maya HK asserted that cnnews.com stands for "China News" because the characters "cn" are widely used and understood to be an abbreviation for the country name "China" and "cn" is the top-level Internet domain for China.9 More recently, Shanghai Maya has admitted that "cnnews" in fact stands for "China Network News," the abbreviation for which is "CNN." It appears, therefore, that Shanghai Maya intends consumers to view the cnnews.com domain name as including the CNN mark in the form of "cnn-news.com," rather than as "cn-news.com." And, while Maya HK asserts that most people who access the cnnews.com website in China likely have never heard of CNN, it is clear that many Chinese-speaking people worldwide, including residents of China, have access to plaintiff's television station as well as to the cnn.com website and its sub-sites.
Maya HK asserts that the target audience of its online services, including cnnews.com, is located entirely within China. Yet, there is a significant amount of English language content on both the cnnews.com site and the various linked sites, including (i) an art section on the cnnews.com website, (ii) an extensive site that provides information about the city of Shanghai offered by Shanghai Maya as part of a linked cnmaya.com website, and (iii) a variety of other English-language content prominently linked to the cnnews. com site by buttons and banners.10 Furthermore, while Maya HK asserts that its business aspirations focus solely on China, it is significant that Tom.com, which owns 50% of Shanghai Maya, has stated publicly that it owns companies such as Shanghai Maya to allow it to fulfill its goal of creating a "megaportal" that provides Chinese content and commerce to the entire Chinese-speaking world.
Plaintiff acted promptly when it discovered that Wang had registered the cnnews.com domain name with NSI and that news information had been posted on that site. First, plaintiff notified Wang of its service mark rights and demanded that he transfer the domain name cnnews.com to plaintiff. Plaintiff also warned that it would pursue an ACPA in rem action in the Eastern District of Virginia to acquire control over the cnnews.com domain name, in the event Wang failed to comply with the demand. Maya HK responded that it did not intend to comply with plaintiff's demands. Next, plaintiff suggested that Wang change or modify the domain name of the news website to "cn-news.com" and use the new domain name only in Chinese characters. When this proposal was rejected, plaintiff filed this complaint,11 alleging a violation of the in rem provisions of the ACPA. See 15 U.S.C. § 1125(d)(2)(A). More specifically, the complaint alleges that use of the cnnews.com domain name infringes and dilutes plaintiff's rights to the CNN mark, in violation of the Lanham Act, 15 U.S.C. §§ 1114, 1125(a), and the Federal Trademark Dilution Act, 15 U.S.C. § 1125(c).
Because plaintiff's representatives had provided the attorney for Maya HK and Wang with actual notice of the suit, plaintiff sought a waiver of the ACPA's service by publication requirement for in rem suits.12 This request was denied. See Cable News Network L.P., L.L.L.P. v. CNNews.com, Civil Action No. 00-2022-A (E.D.Va. Jan. 29, 2001) (order). Plaintiff then successfully completed service by publication pursuant to 15 U.S.C. § 1125(d)(2)(B) by sending its amended complaint13 and other motions to Maya HK and Wang at the address provided in the WHOIS record14 via e-mail and FedEx15 and by printing notice of the action for five consecutive days in Chinese, in the Hong Kong newspapers Sing Tao and Apple Daily, and in English, in the Hong Kong newspaper South China Morning Post.
In the course of serving process, plaintiff learned that after this controversy had arisen, but before plaintiff filed its complaint, Wang had changed the registrar for the cnnews.com domain name from NSI to Eastern Communications Company Limited ("Eastcom"), a Chinese registrar. Notwithstanding this change of registrars, Verisign continues to be the registry for the cnnews.com domain name, as it is for all ".com" websites.16 Additionally, plaintiff learned that Wang had also changed the registrant of the cnnews.com domain name from himself to Maya HK, but kept himself as the administrative contact for the name.
On March 14, 2001, Eastcom, the current registrar for the cnnews.com domain name, and Verisign, the registry, agreed to transfer control of the cnnews. com domain name to this Court by depositing a registrar certificate for the cnnews. com domain name with the Clerk of this Court, as the ACPA requires. See 15 U.S.C. § 1125(d)(2)(D). This certificate, by its terms, "tenders to the Court complete control and authority over the registration for the cnnews.com domain name registration record."17
Maya HK18 thereafter filed a timely motion to dismiss alleging that (i) the ACPA's in rem provisions do not provide a constitutionally permissible basis for jurisdiction; (ii)...
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