Cable News
Network LP, LLP v. Elie Khouri d/b/a Channel News Network et al.
Claim Number: FA0208000117876
PARTIES
Complainant is Cable News Network LP, LLP, Atlanta, GA, USA (“Complainant”) represented by John D. Haynes, of Alston & Bird, LLP. Respondent is Elie Khouri d/b/a Channel News Network et al., Beirut, LEBANON (“Respondent”) represented by James K. Lewis, of Patton Boggs LLP.
There are 325 domain names at issue, all of which are of the form of <cnn + x .gTLD> where x is a predefined suffix and gTLD is a specific generic top level domain (specifically .com, .org, .net, .biz or .bz) (collectively the “disputed domain names”). Although .bz is officially a country code top level domain, for purposes of simplicity in this decision it will be referred to along with the others as generic. The suffix is: a different country name or country abbreviation (with or without a preceding dash) (286 names), a different name of a geographic region (with or without a preceding dash) (17 names), a different generic or descriptive term (with or without a preceding dash) (10 names), or a different 2 or 3 letter grouping (12 names). All the domain names are alphabetically listed, organized by type, in Appendix A hereto and, organized by registrar, in Appendix B hereto. The registrars are DomainBank.com (299 names), eNIC (22 names) and IHOLDINGS.COM, INC. d/b/a DOTREGISTRAR.COM (3 names) (collectively the “Registrars”).
PANEL
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Mr. Peter
L. Michaelson, Esq. as Presiding Panelist.
Hon.
James P. Buchele (retired) as Panelist.
Ms. Uwa Ohiku, Esq. as Panelist.
PROCEDURAL HISTORY
The Complaint was brought pursuant to the Uniform Domain Name Dispute Resolution Policy (“Policy”), available at <icann.org/services/udrp/udrp‑policy‑24oct99.htm>, which was adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, and approved on October 24, 1999, and in accordance with the ICANN Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”) as approved on October 24, 1999, as supplemented by the National Arbitration Forum Supplemental Rules for Uniform Domain Name Dispute Resolution Policy then in effect (“Supplemental Rules”).
The Complainant submitted a Complaint, together with Exhibits A - C (including subparts) to the National Arbitration Forum (the “Forum”) electronically on August 6, 2002; the Forum received a hard copy of the Complaint on August 7, 2002.
On August 7, 2002 and August 19, 2002, the Registrars confirmed by e-mail to the Forum that all the disputed domain names are registered with them and confirmed the corresponding registrant as listed in the Complaint (and the Appendices hereto) as the current registrant of each of those names. The Registrars have verified that the registrant of each of the disputed domain names, is bound, for that name, by the registration agreement of the corresponding registrar, and in accordance with those agreements has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the Policy.
On August 20, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 9, 2002 by which the Respondent could file a Response to the Complaint, was transmitted to the Respondent via e-mail, post and fax, to all entities and persons listed on the Respondent’s registrations as technical, administrative and billing contacts, and, by e-mail, to the postmaster at each of the disputed domain names.
On September 30, 2002, the Parties filed a Joint Request to Stay the Administrative Proceeding (a copy of which appears in both Exhibit O to the Response and Exhibit A-5 to the Complainant’s Additional Submission) for a 10-day period or until October 10, 2002. The Request expressly stated, in part:
“Respondent as well as Channel News Network (Lebanon) sarl, Presidente Advertising Agency, Presidente Advertising Co., sarl and Hot Sales and Business Center agree to transfer all of the domain names at issue in order to resolve this proceeding. The requested stay period is to allow time to complete the transfer. If this matter is not fully resolved within the extended time period, the Parties agree that Respondent shall have one (1) calendar day thereafter to file a response to the Complaint.”
On October 1, 2002, the Forum issued an order (a copy of which appears in Exhibit P to the Response) granting the requested stay. The order expressly stated, in part:
“The Parties, having been advised that a Panel has not been appointed, and that the Decision in this matter has not been published, requested that the Administrative Proceeding ... be stayed for a one-time period of ten (10) days until October 10, 2002.
If this matter is not settled and the Complaint withdrawn, one of the Parties must submit a request to the Forum to continue the Administrative Proceeding by October 10, 2002, or the Complaint will be withdrawn by the Forum and the file closed.”
The Respondents contacted the Forum on October 11, 2002 (due date for filing the Response) and requested that this proceeding be dismissed because neither party filed a written request to reinstate the proceedings.
In response to the Respondents’ request, the Forum issued an order dated October 11, 2002 denying this request. The order (a copy of which appears in Exhibit A-6 to the Complainant’s Additional Submission and in Exhibit E to the Respondent’s Additional Submission) stated, in part:
“The signed Joint Request of the parties for a stay provided:
‘If this matter is not fully resolved within the extended time period, the Parties agree that the Respondent shall have one (1) calendar day thereafter to file a response to the Complainant. The Parties further request that the action then proceed according to normal rules and scheduling.’
The Parties failed to arrive at an agreement within the requested stay. Therefore, the action shall ‘proceed according to normal rules and scheduling’.”
A timely Response, together with Exhibits A-P, was received by the Forum and determined to be complete on October 11, 2002.
The Complainant filed its Additional Submission, together with Exhibits A and A1-A9, on October 16, 2002; the Forum determined on that date that this additional submission was complete. The Respondent then filed its Additional Submission, together with Exhibits A-E, on October 21, 2002; the Forum determined on that date that this additional submission was complete.
On
November 4, 2002, pursuant to the Complainant’s request to have the dispute
decided by a three-member panel
together with the panel selections made by each party, the Forum appointed Mr. Peter L. Michaelson, Esq. as Presiding Panelist and
Hon. James P. Buchele (retired) and Ms. Uwa Ohiku, Esq. as Panelists. The Forum also set a due date of November 18, 2002 to receive the decision from the
Panel.
Due
to the complexity of this proceeding and the schedules of the various
panelists, the Panel, through a procedural order dated November 15, 2002,
extended the due date for its decision by approximately one month to December
16, 2002.
RELIEF SOUGHT
The Complainant requests that all the disputed domain names be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Confusing similarity/identicality
The Complainant contends that all the disputed domain names are confusingly similar to Complainant’s CNN Mark.
Specifically,
the Complainant contends that the “striking similarity” between all the
disputed domain names and the CNN Mark is immediately apparent. Furthermore, the Complainant contends that
consumers who see the disputed domain names are certain to associate them with
the Complainant, particularly in light of the Complainant’s protocol for naming
its regional sites using domain names that include a geographic or language
identifier. In that regard, the
Complainant states that many of the disputed domain names are almost identical
to the Complainant’s own geographic-based domain names, sometimes differing by
only the inclusion of a hyphen (compare, e.g., the disputed domain name <cnn-brazil.com>
with the Complainant’s domain name <cnnbrazil.com>).
Hence, Complainant concludes that the requirements of paragraph 4(a)(i) of the Policy are satisfied.
2. Rights and legitimate interests
The Complainant contends that the Respondents have no rights or legitimate interests in any of the disputed domain names.
Specifically, the Complainant alleges that the Respondents’ registration and use of the disputed domain names is a “blatant attempt” to trade on the goodwill and fame associated with the CNN Mark. In that regard, the Complainant states that the Respondents have no connection or affiliation with the Complainant, nor has the Complainant granted the Respondents a license or consent, express or implied, to use the CNN Mark in domain names or in any other manner. In light of the worldwide fame and registrations of the CNN Mark, the Complainant contends that the Respondents have no legitimate reason or right to register or use hundreds of domain names, each of which includes the CNN Mark, in connection with a web portal that offers services directly competitive to those offered by the Complainant.
Furthermore, the Complainant contends that the
Respondents were on notice of the Complainant’s exclusive rights in its CNN
Mark as a result of the Complainant’s numerous worldwide registrations of its
marks and prior extensive use of its marks, including in Lebanon. In that regard, the Complainant alleges,
that the Respondents, when registering the disputed domain names, must have
become aware of the Complainant’s naming convention of its domain names when
the Respondent learned of the numerous pre-existing domain name registrations
owned by the Complainant that utilized that convention. Thus, the Complainant concludes that the
Respondents have no rights or legitimate interests in any of the disputed
domain names.
The Complainant opines that the Respondent Khouri
apparently believes, though falsely, that he is entitled to use the disputed
domain names in connection with his operation of his own news network, Channel
News Network, which provides Internet-based news and information services which
are identical to the Complainant’s news services offered under its CNN Mark.
In that regard, the Complainant points to various UDRP decisions in which panels have been confronted with situations where a domain name at issue was confusingly similar to a famous and distinctive trademark, yet the registrant alleges good faith because it ostensibly used the domain name to offer goods or services to the public. Those decisions, as viewed by the Complainant, establish the propositions that: (a) an infringing use cannot be a bona fide, good faith use; and (b) constructive or actual knowledge of the trademark owner’s mark renders the registration and use bad faith -- these being particularly true where a domain name is used to compete with a trademark holder. In that regard, the Complainant cites to Cable News Network LP, LLLP v. Ahmed Latif, FA 100709 (Nat. Arb. Forum, Dec. 31, 2001) (holding that the “offering of goods or services in association with an infringing trademark use does not constitute a ‘bona fide’ offering of goods and services within the meaning of Policy paragraph 4(c)(i).”). The Complainant also cited to Two Systems Enterprises Co., Ltd. v. Sonie’s Creations, AF‑0911 (eResolution, Sept. 7, 2001); American Online, Inc. v. Fu D2000-1374 (WIPO, Dec. 11, 2000) (holding that it would be “unconscionable to find a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business.”); and Delta Corporate Entity, Inc. v. Seventh Summit Ventures, FA 106112 (Nat. Arb. Forum, May 6, 2002) (holding that use of domain name to redirect consumers to a competing web site cannot be a bona fide offering of goods and services).
With those cases in mind, the Complainant contends the Respondent Khouri cannot deny that he was fully aware of the Complainant, its services and its worldwide fame when he registered the disputed domain names. Indeed, since this Respondent lived in the United States for over fifteen years, the Complainant takes the position that it is “inconceivable that Respondent could make such an argument with a straight face”. Hence, the Complainant concludes that “this knowledge coupled with the worldwide fame of the CNN Mark precludes any argument that Respondent has a legitimate right to use the Domain Names.”
Thus, the Complainant concludes that the Respondent cannot demonstrate any rights or legitimate interests in any of the disputed domain names pursuant to paragraph 4(a)(ii) of the Policy.
3. Bad faith use and registration
The Complainant contends that the Respondents have registered and are using each of the disputed domain names in bad faith in violation of paragraph 4(a)(iii) of the Policy.
First, the Complainant contends that the Respondents’ actions constitute a bad faith attempt to trade on the fame and goodwill of the Complainant’s CNN Mark in contravention of paragraph 4(b)(iv) of the Policy.
In particular, the Complainant contends that the Respondents’ registration and use of the disputed domain names is intended to attract Internet users to Respondent Channel’s competing web sites by creating a likelihood of confusion with the Complainant’s CNN Mark as to the source, sponsorship, affiliation and endorsement of the Respondents’ services. Specifically, the Complainant contends that Internet viewers interested in determining whether the Complainant has additional regional web content are likely to search for that content by typing in one of the disputed domain names, such as <cnnindia.com>, <cnnafrica.com>, <cnnkenya.com>, <cnnafghanistan.com>, or hundreds of others that follow the Complainant’s naming convention such as <cnnjapan.com>, <cnnbrazil.com>, and <cnnindia.biz>. Once such a viewer has arrived at one of the Respondent’s sites, that individual is likely to believe that the site is associated or affiliated with the Complainant due to the similarity of the content provided. Yet, even if the content of that site clarifies to the users that it is not associated or affiliated with the Complainant, the Respondents’ use would still infringe the Complainant’s CNN Mark because of the initial interest confusion that drove Internet traffic (those users) to the Respondents’ site in the first instance, i.e. by mistake. See, e.g., Two Systems Enterprises Co., Ltd. v. Sonie’s Creations, cited supra; and Sony Corporation v. Times Vision, Ltd., FA 095686 (Nat. Arb. Forum, Mar. 9, 2001).
Furthermore, the Complainant contends that the Respondents’ intent to trade on the goodwill, that the Complainant has established in its CNN Mark, is apparent because the Respondent Khouri, in adopting the Complainant’s naming convention, divided his web sites into regions and linked to these sites using domain names consisting of the term “CNN” followed by a geographic modifier. This is the exact same naming convention which the Complainant uses and, as such, is obviously aimed at capturing Internet traffic searching for the Complainant’s own regional web sites. For example, Internet users searching for the Complainant’s Arabic-language web site might mistakenly type <cnn‑brazil.com> (instead of <cnnbrazil.com>) and end up at the Respondents’, rather than the Complainant’s web site.
Hence, the Complainant views the Respondents’ actions as constituting a bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy.
In that regard, the Complainant cites to, e.g., David Brown O/B/O Inspectortools.com v. Professional Equipment, FA 109757 (Nat. Arb. Forum, May 31, 2002) (finding bad faith and noting that respondent’s registration and use of domain name incorporating competitor’s mark was a “deliberate attempt to benefit from a perceived affiliation with Complainant’s products”).
Second, the Complainant contends
that the Respondent’s actions
constitute a bad faith attempt to block the Complainant from reflecting its CNN
Mark in corresponding domain names, hence violating paragraph 4(b)(ii) of the
Policy.
Specifically, the Complainant alleges that the bad faith is shown by the Respondent’s actions in registering a huge volume of domain names beginning with the CNN Mark which effectively prohibits the Complainant from expanding its own Internet coverage into additional geographic regions. The Complainant takes the position that the Respondents have registered “nearly every conceivable domain name” consisting of the term “CNN” and a geographic modifier that was not already owned by the Complainant. Hence, the Complainant alleges that the Respondents’ actions prohibit the Complainant, from registering and using numerous domain names that the “Complainant has every right to register and use and which may be valuable to its business both now and in the future”. In this instance, the Complainant cites to, e.g.: Yahoo! Inc. v. Seocho, FA 109050 (Nat. Arb. Forum, May 13, 2002) (finding bad faith pursuant to paragraph 4(b)(ii) based on registration of 21 domain names incorporating Yahoo! mark); and Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum, Sept. 8, 2000) (bad faith found based on registration of several infringing domain names).
Moreover, the Complainant opines that, in light of the worldwide fame of the CNN Mark and given that Respondent Khouri resided in the United States, formed numerous US‑based corporations and undoubtedly discovered many of the Complainant’s web sites when registering the disputed domain names, it is inconceivable that the Respondents could have registered the disputed domain names in ignorance of the Complainant’s rights in the CNN Mark.
Further, the Complainant contends that, even if the Respondents were to claim ignorance of the Complainant, the latter’s federal registration for its CNN Mark constitutes constructive notice of the Complainant’s rights. As such, the Complainant concludes that the Respondents either knew, or should have known, of the Complainant when the Respondents registered the disputed domain names. Such knowledge at the time of registration, by itself, constitutes per se bad faith registration, citing to, e.g.,: Guardian Indus. Corp. v. Siam Plate Glass Industry Ltd. FA 104470 (Nat. Arb. Forum, Mar. 25, 2002) (finding that the respondent had to know of the complainant since both parties competed in same markets and that registration of domain names incorporating the complainant’s mark constitutes per se bad faith).
Lastly, the Complainant contends
that the Respondent’s actions
constitute a bad faith attempt to disrupt the business of a competitor; hence
violating paragraph 4(b)(iii) of the Policy.
In this regard, the Complainant contends that the Respondents are using the vast majority of the disputed domain names to direct Internet traffic to the Respondents’ regional news and information web sites that directly compete with the Complainant’s web sites. Given the directly competitive relationship between the Complainant and the Respondents, the Respondents’ actions evidence a bad faith intent to disrupt the Complainant’s business by improperly capturing Internet users who are actually attempting to reach one of the Complainant’s sites. The Complainant cites to, e.g.: David Brown O/B/O Inspectortools.com v. Professional Equipment, cited supra (“Given that both Complainant and Respondent are [direct competitors], it is reasonable to infer that Respondent registered and used the disputed domain name in order to disrupt Complainant’s business”) and Surface Protection Indus., Inc. v. Webposters D2000-1613 (WIPO, Feb. 5, 2001).
Hence, Complainant concludes that the requirements of paragraph 4(a)(iii) are satisfied with respect to all of the disputed domain names.
B. Respondent
The Respondents state that through the Complaint, the Complainant bases its argument upon the premise that the names of the entities identified in the Complaint’s caption are merely assumed names for Mr. Elie Faouzi El Khouri.
The Respondents counter this view by stating that Respondents, Channel News Network (Lebanon) sarl (hereinafter “Channel”), Presidente Advertising Agency, Presidente Advertising Co. sarl, and Hot Sales & Business Center are all established valid and existing Lebanese business entities. Presidente Advertising Agency and Presidente Advertising Co. sarl are one company operating as Presidente Agency sarl. Hot Sales and Business Center is a Lebanese registered trademark owned by Presidente Agency sarl on behalf of that Respondent. Mr. Khouri does not own and/or operate each of these entities and in no case are these entities merely Mr. Khouri’s assumed names.
The Respondents state that
each of the disputed domain names is registered to or controlled by the
Respondent Channel. This Respondent is
the sole entity that operates web sites at the disputed domain names. Mr. Khouri and the other listed Respondent
entities merely reserved certain domain names because the Respondent Channel
hired them to do so.
1. Confusing similarity/identicality
The Respondents contend that neither Mr. Khouri’s nor the disputed domain names are confusingly similar to the Complainant’s CNN Mark.
First, Respondent Channel states that it has obtained multiple trademark and service mark registrations for marks embodying the “cnn” letter string, and particularly registrations to which the Complainant has not objected.
Specifically, the Respondents state that on May 1, 2001, the Department of Intellectual Property Protection of the Lebanese Ministry of Economy and Commerce (“Lebanese DIP”) issued Lebanese Trademark Registration No. 85980 to Respondent Channel for the mark “CHANNEL NEWS NETWORK” in International Class 35 for use in connection with “advertisement, publicity and media through internet network, grouping of information, advertisements and news from internet.” On that same date, the Lebanese DIP also issued Lebanese Trademark Registration No. 85981 to Respondent Channel for the mark “CHANNEL NEWS NETWORK LEBANON THE ARAB NEWS ONLINE” in the same International Class for use in connection with the same services. A copy of these registrations respectively appear in Exhibits D and E to the Response.
The Respondent further states that on September 1, 2001, the Lebanese DIP issued Lebanese Trademark Registration No. 86022 to Respondent Channel for the mark “CNNLB”, also in International Class 35, for use in connection with “advertisement, publicity and media through internet network, grouping of information, advertisements and news from internet.” On January 23, 2002, the Lebanese DIP issued Trademark Registration No. 89581 to Respondent Channel for the mark “CHANNEL NEWS NETWORK MIDDLE EAST ARAB NEWS ONLINE - CNNME”, in the same class for use in connection with the same services. These two trademark registrations clearly embody the “cnn” letter string. A copy of these particular registrations appears in Exhibits F and G, respectively. The Respondent contends that despite the “Complainant’s alleged world famous mark” and the Complainant’s Lebanese registration for its CNN Mark in International Class 38, the Lebanese DIP issued the four trademark registrations noted above to the Respondent Channel for use in connection with its ongoing Internet based news services.
The Respondents then contend that although Lebanese law provides aggrieved parties with an opportunity to oppose and cancel applications and registrations for infringing marks, the Complainant never attempted to oppose or cancel any of the Respondent Channel’s Lebanese trademark registrations. Hence, Respondents contend that inasmuch as the Complainant failed to move against these four marks, Respondent Channel has developed “extensive common law rights in marks that incorporate the string ‘cnn’ in connection with its Internet news services”.
Second, the Respondents contend that Respondent Channel’s consumers seek out Channel’s web sites precisely because Channel features news coverage drastically different from that provided by the Complainant.
The Respondents allege, that although both Respondent Channel and the Complainant operate within the same general industry, Respondent Channel offers an entirely different style and type of news. Specifically, the Respondents contend that Respondent Channel is well known for offering unbiased in-depth reporting on Middle Eastern affairs that stands in stark contrast to news provided by media giants like the Complainant, ABC, NBC, CBS and Fox. Respondent Channel “made its name” by reporting detailed Middle Eastern news that other media outlets overlooked. Thus, Respondent Channel has garnered a devoted following among Middle Easterners living around the world, particularly ex-patriots living in the United States, where thorough Middle Eastern news coverage is almost never offered.
Further, the Respondents contend
that because Respondent Channel’s corporate name and logo – which differ from
that of the Complainant – are always prominently displayed (a hard copy of
homepages of some of the Respondent Channel’s web sites bearing this logo
appear in Exhibit L to the Response), there is “no possibility that consumers
will be confused once they have arrived at one of Channel’s web sites.”
Lastly, the Respondents contend that the Complainant has acquiesced to one its biggest competitors’ use of a series of service marks embodying the “cnn” letter string.
Specifically, the Respondents state that Respondent Channel’s use of the “cnn” letter string is also identical to Gannett Co., Inc.’s (hereafter “Gannett”) use of it in its “NFCNN” service mark in the United States and around the world in International Class 35. Gannett is an international news and information company that publishes nearly 100 daily newspapers in the United States, including USA Today, the nation’s top-selling daily newspaper. Gannett also owns more than 300 non-daily publications in the United States as well as USA Weekend, a weekly newspaper magazine. Gannett’s United Kingdom subsidiary publishes more than 300 titles, including 15 daily newspapers. Gannett also operates 22 television stations in the United States and is an Internet leader with sites sponsored by most of its television stations and newspapers. The Respondents state that Gannett is one of the Complainant’s largest competitors.
The Respondents state that, in January 1993, Gannett applied to the United States Patent and Trademark Office for registration of its “NFCNN” mark in the same International Class that the Complainant had registered many of its CNN Marks. The Complainant never opposed or moved to cancel the mark and has apparently never demanded that Gannett cease and desist from using the “NFCNN” mark. Gannett’s application matured to registration and the mark still active and registered in the United States. Gannett also owns two other valid and active United States trademark registrations for marks incorporating the “cnn” letter string.
The Respondents state that Respondent Channel has registered and exploited its marks first in the Middle East and now throughout the world via its popular Internet news portals. Gannett, too, has adopted and used its marks embodying the “cnn” letter string for use in connection with services in International Class 35. All the while, according to the Respondents, the Complainant has been idle except for the instant action and its complaints immediately preceding it. As such, the Respondents contend that the Complainant has apparently acquiesced to Respondent Channel and Gannett’s use of the “cnn” letter string. Additionally, the Respondents contend that the Complainant has not shown any evidence of actual or potential consumer confusion. Moreover, the Complainant has failed to take any action against Respondent Channel’s registered trademarks embodying the “cnn” letter string and has significantly delayed in bringing this action, despite knowing about Respondent Channel’s operations for years. Hence, the Respondents contend that through the Complainant’s acquiescence and considerable delay in bringing this action, the Complainant has tacitly acknowledged that the “cnn” letter string can be associated in the minds of consumers with a number of goods and services other than those of the Complainant.
Furthermore, the Respondents state that simply because marks are similar does not mean that they are confusingly so. The mere presence of a famous trademark within a domain name including other letters does not mean that the marks are confusingly similar. This is especially true where the domain name is a derivative of the name of Respondents’ primary business name
Accordingly, the Respondents conclude that Respondent Channel’s use of the “cnn” letter string in each of the disputed domain names is not confusingly similar to the Complainant’s CNN Mark; therefore, paragraph 4(a)(i) of the Policy is not met.
2. Rights and legitimate interests
Respondent Channel contends that it has
rights and legitimate interests in the disputed domain names.
In essence, this Respondent states that
it has used the disputed domain names in connection with bona services at least
as early as November 2000 and was demonstrably prepared to use those names as
early as April 1999; hence ostensibly indicating its rights and legitimate
interests in those names under paragraph 4(c)(i) of the Policy.
Specifically, the Respondents state
that at least as early as the beginning of 1999, promoters of Respondent
Channel were investigating the prospect of offering worldwide Internet portals
for Middle East regional news. By April
1999, those promoters had commissioned Lebanon Index to prepare a business plan
analysis and market study to determine the commercial need for region-specific
news via the Internet. (A copy of that plan dated April 15, 1999 appears in
Exhibit H to the Response). In its
evaluation, Lebanon Index identified a high demand for English‑language
web sites providing non‑biased news and information concerning the Middle
East and Lebanon particularly. The
Lebanon Index evaluation contemplated not only an initial launch of a Lebanese
and Middle Eastern Internet portal, but also an eventual expansion to web
portals serving regions and countries worldwide. Lebanon Index’s evaluation (see page 2 thereof) called for
reserving many domain names based upon the “Channel
News Network” name followed by a country or regional identifier (e.g.,
<ChannelNewsNetworkLebanon.com>, <ChannelNewsNetworkKuwait.com> and
<ChannelNewsNetworkSaudiArabia.com>, etc.). Because including the complete company name in this naming
protocol was cumbersome, the Lebanon Index evaluation suggested adopting a
suitable abbreviation. To ensure market
penetration and to protect Respondent Channel against cybersquatters, the
Lebanon Index evaluation determined (see page 3 of the plan) that Respondent
Channel should “acquire the maximum registration of domain names in Lebanon,
USA and all the available registrars and country extensions in the world.”
Respondent Channel states that it did just that.
The Lebanon Index evaluation (also
see page 3 of the plan) further concluded that Channel’s goals could be met
over the course of four to five years at a cost of approximately
US $30,000,000.00. As 1999 and
2000 progressed, Respondent Channel’s promoters actively sought investment
money and aggressively went about establishing a business designed to achieve
the goals set forth in the Lebanon Index evaluation. By the end of November 2000, Respondent Channel was formed and
had registered most of the many domain names contemplated in the Lebanon Index evaluation
and many of the disputed domain names.
In that regard and by that time, investors and early consumers had
expressed a need for a shorthand way to express the complete corporate name of
the Respondent Channel for the purpose of typing its domain names. Hence, while many of the domain names
included the entire corporate name, others included the “cnn” letter string –
as an abbreviation for Respondent Channel News Network.
After its formation, Respondent
Channel quickly gained momentum. In
June 2001, Respondent Khouri was featured in the magazine Masculin for his role as Editor in Chief of Channel’s news
web sites. The article (a copy of which
appears in Exhibit I to the Response) about Mr. Khouri prominently features the
“CHANNEL NEWS NETWORK” and “CNNME” trademarks as well as the <cnnme.com>
domain name.
Later, Respondent Channel’s
“CHANNEL NEWS NETWORK MIDDLE EAST”, “CHANNEL NEWS NETWORK WORLDWIDE”, “CHANNEL
NEWS NETWORK AMERICA”, “CHANNEL NEWS NETWORK AFGHANISTAN” trademarks and the
corresponding domain names <cnnme.com>, <cnnww.com>,
<cnn-us.com>, and <cnnaf.com> were featured in the
January 2002 edition of the Country Commercial Guide Lebanon published by the Embassy of the United States of
America in Beirut, Lebanon. A copy of this guide appears in Exhibit J to the
Response. Respondent Channel was also
the subject of an entire half hour broadcast of the television program Inside
Business broadcast locally and by satellite in
early 2001 by NBN, a Lebanese national television broadcasting network. A copy
of that broadcast has been provided on videotape as Exhibit K to the
Response. Channel and its “cnn” based
domain names were also featured in the Technology Section of the March 25, 2001
edition of the Al Anwar Daily News in a
detailed article -- a copy of which appears in Arabic in Exhibit M to the
Response.
Also, the Respondents state that
Respondent Channel has entered business advertising arrangements with
established corporations around the world including Marriott International,
Inc. with regard to Marriott Vacation Club International, The Sheraton
Corporation with regard to its Sheraton Damascus Hotel, Coldwell Banker
Corporation and Fransabank, s.a.l. Each
of these entities advertises on Respondent Channel’s web sites and has determined
that Respondent Channel’s business and public image are presences with which
they enjoy being aligned. Hard copies
of various pages of some of the Respondent’s web sites that depict these
advertisements appear in Exhibit L to the Response.
Respondent Channel also states that
it has invested significant time and money into promoting its web sites
including those featuring the “cnn” letter string.
Hence, Respondent Channel states
that its 1999 business plan which employed the disputed domain names and
subsequent pursuit of that business plan are sufficient proof of Respondent
Channel’s demonstrable preparation to use the disputed domain names in
connection with a bona fide offering of its news services. Furthermore, Respondent Channel continues to
offer news services at web sites resolvable through the disputed web sites,
further establishing its bona fide offering pursuant to paragraph 4(c)(i) of
the Policy.
Lastly, Respondent Channel states
that it has established its ownership and operation of a community of web sites
before notice of the current dispute, further bolstering its bona fide offering
of legitimate services under the disputed domain names.
Therefore, the Respondents conclude
that Respondent Channel has significant rights and interests in all the
disputed domain names.
3. Bad faith use and registration
The Respondents contend that, contrary to the Complainant’s view, the Respondents did not register any of the disputed domain names in bad faith.
First, the Respondents contend that Respondent Khouri did not reserve and Respondent Channel has not acquired the disputed domain names for the purpose of selling, renting, or otherwise transferring them to the Complainant or any other party.
Specifically, the Respondents
state that Respondent Channel thoroughly planned its venture into the Internet
news industry. Beginning in early 1999
and as noted above, Respondent Channel commissioned an extensive study and
evaluation of the relevant market. Over
the course of the following one and one half years, Respondent Channel
continued its research and developed the necessary capital to achieve its
ambitious goals. By November 2000,
Respondent Channel began its operations and began adopting many of the domain
names it now owns. As a prudent measure
to prevent cybersquatting, Respondent Channel reserved as many domain names as
it could embodying its “CHANNEL NEWS NETWORK” mark and appropriate
abbreviations.
Furthermore, the Respondents
state that prior to and during the present action, Respondent Channel engaged
in discussions with the Complainant.
The Respondents further state that at no time did Respondent Channel
offer to sell or rent the disputed domain names to the Complainant or any other
entity. In that regard, Respondent
Channel reserved those domain names for the purpose of putting those names to
the above‑described use, and not for the purpose of hijacking them. The Respondents state: “[t]hat Channel
reserved many more names than it uses is evidence of Channel’s commitment to
its business, not of its intent to high jack [sic] the names. It is sound business practice for companies
to reserve as many domain names as they can afford to in order to prevent
others from putting them to improper use.
Had Cable [Complainant] adopted this policy, perhaps Channel would not
have been allowed to adopt the domain names it did or perhaps Cable would have
sold the domain names to Channel”.
Second, the Respondents contend that neither Respondent Khouri nor Respondent Channel registered the disputed domain names for the purpose of preventing the Complainant or any other party from reflecting the “cnn” letter string in their own domain names.
Specifically, the Respondents state
that Respondent Channel has spent significant sums of money to develop and
exploit its many news web sites.
Because of its efforts, Respondent Channel now enjoys great success
around the world, particularly in the Middle East. Presently, its news web sites target countries and regions on
every continent. Respondent Channel has
attracted as advertisers some of the largest corporations in the world. Furthermore, Respondent Channel has
successfully registered trademarks in its home country and is currently seeking
registration of its marks in other countries, too, including the United
States. The Respondents state that at
no time through the course of its development has Respondent Channel endeavored
to prevent the Complainant or any other entity from using their own trademarks
or conducting their own businesses.
Third, the Respondents contend that neither Respondents Khouri nor Channel registered the disputed domain names for the purpose of disrupting any party’s business.
In that regard, the Respondents state that at no time
did Respondent Khouri or Channel seek to disrupt any other parties’ business
and certainly they have never endeavored to disrupt the Complainant’s
business. The Respondents contend that
“Indeed, it would be virtually impossible for Channel to do so. Cable [Complainant] is one of the largest
news outlets in the world. Channel is a
small company focused on serving Middle Easterners and those interested in
detailed coverage of Middle Eastern affairs.
Channel’s size and scope is a mere fraction of what Cable has achieved
and it is inconceivable that Cable’s business has or will be disrupted in any
way due to Channel’s operations.
Neither Mr. Khouri nor Channel pretend to have the market power to
disrupt – or even compete with – Cable.
As detailed above, Channel has only ever intended to use the disputed
domain names in furtherance of its own specific business plan.”
Fourth, the Respondents contend that neither Respondent Khouri nor Channel has
attempted to attract, for commercial gain, Internet users by creating a
likelihood of confusion with the Complainant’s CNN Mark as to the source,
sponsorship, affiliation, or endorsement of the Complainant’s web sites or of a
product or service on the Complainant’s web sites.
In that regard, the Respondents contend that while
both the Complainant and Respondent Channel operate within the same general
industry, their respective consumers look to the Complainant and Respondent
Channel for drastically different reasons.
Specifically, the Respondents contend that Respondent Channel has made
its name in the international news market by offering non-biased coverage of
Middle East news stories that are ignored by major media outlets. Its business purpose is not to attract
Internet users looking for the Complainant’s news service, but merely to
provide comprehensive Middle East coverage that is unavailable elsewhere.
Furthermore, the Respondents
contend, for the reasons given above, that Respondent Channel uses the disputed
domain names for its legitimate business purposes and in good faith. However, the Respondents take the position
that only Mr. Khouri is the target of the Complaint. In their defense, the Respondents state that under no
circumstances has Respondent Khouri used the disputed domain names in any way
contrary to the Policy. Indeed, he has
never used those names at all.
Hence, the Respondents contend
that the Complaint must be dismissed or, alternatively, disregarded in large
part and the relief sought against Mr. Khouri denied.
C. Additional Submissions
Inasmuch as both the Complainant’s and the Respondents’ Additional Submissions were timely filed with the Forum, the Panel has fully considered them.
1. Complainant’s Additional Submission
In its Additional Submission, the Complainant argued that, contrary to the views expressed by the Respondents, the Panel has jurisdiction over all the disputed domain names and also offered additional evidence to establish that: (a) the disputed domain names are confusingly similar to the Complainant’s CNN Mark and (b) the Respondents have acted in bad faith.
As to jurisdiction, the Complainant contends that all of the purported “Lebanese business entities” are in fact either founded, controlled, or managed by Respondent Khouri, as described in the Complaint. Furthermore, the Complainant documents this relationship, through a supplemental declaration of John D. Haynes (appearing in Exhibit A to the Complainant’s Supplemental Submission); salient portions of which are as follows:
“3. It is my understanding that CNN first learned of Elie Khouri when CNN’s domain name monitoring service reported that nearly a thousand domain names had been registered containing the CNN Mark followed by a geographic identifier. At that time, Mr. Khouri was listed as the registrant of over 600 domain names that began with the letter string “CNN”.
4.
Mr. Khouri was listed as the administrative contact for hundreds of other
domain names registered under the names Presidente Advertising Agency, Channel
News Network Hot Sales and Business Center, and variants thereof...
15.
... It is clear, however, that Elie Khouri remained the unifying factor between
all of the Domain Names and the various named registrants. In addition to registering hundreds of
domain names in his own name, Mr. Khouri was also the General Manager of
Presidente Advertising Agency and the Editor-in-Chief of Channel News
Network. I also learned that Mr. Khouri
formerly resided in the United States and had taken steps to incorporate an
entity in Virginia (his former state of residence) under the name Channel News
Network, Inc. after moving to Lebanon.
17.
Channel, who Respondents now claim is in control of the Domain Names, was
founded by Mr. Khouri. The original
shares in Channel were distributed to Mr. Khouri, his son Fawzi Elie El Khoury,
his brother Halim Fawzi El Khoury, and his brother’s son Charbel Halim El
Khoury. See Exhibit B to the Response.
Although Mr. Khouri apparently transferred his shares and those of his
son to Fady Sobhi El-Qach, the remaining shares are still owned by his brother
and his brother’s son. See Exhibit C to the Response. Mr. Khouri also remains the editor-in-chief
of Channel and he continues to conduct business on Channel’s behalf. ...
18. Accordingly, if anything, the evidence
offered by the Respondents bolsters CNN’s election to name Mr. Khouri as the
respondent. Mr. Khouri admits that he
is the founding member of Channel, admits that he registered most of the Domain
Names at issue, and admits that he is intimately involved with the operation of
the web sites posted to the Domain Names.
CNN’s choice to name Mr. Khouri was therefore entirely appropriate.”
Further, the Complainant contends that it is
immaterial whether the disputed domain names are in fact controlled by Mr.
Khouri or are instead controlled by a business entity founded by Mr. Khouri
because the Respondents have admitted that a single entity, Respondent Channel,
is either the registrant or is in control over all of these names. In addition,
the Complainant points to the Response as being a “full response from all the
entities named in the Complaint”.
Hence, the Complainant concludes that the
Panel may render a decision with respect to all of the disputed domain names
because the entity (or entities) with control over those domain names has
notice of this dispute and has in fact responded -- regardless of whether that
entity is “identified as Elie Khouri or one of the myriad of businesses founded
by him and/or his relatives”.
As to confusing similarity, the Complainant
first addresses the Respondent’s Lebanese registrations and the purported
linkage, advanced by the Respondent, that the existence of these registrations
evidences the Complainant’s recognition that there is no confusion between the
Complainant’s CNN Mark and the disputed domain names.
In essence, the Complainant states that any
such linkage is baseless.
Specifically and contrary to Respondents’
suggestion, there is no opposition procedure following publication in the
Lebanese Trademark Office, though the Complainant can, however, file a
cancellation action in Lebanese civil court.
The Complainant states that it has refrained from doing so only because
the Respondents have repeatedly offered to engage in discussions to reach a
global settlement of all issues between the parties. The Complainant states that its forbearance does nothing to
alleviate the inevitable confusion caused by Respondents’ use of the disputed
domain names.
Second, the Complainant points to the Respondents’ suggestion that consumer confusion is unlikely because the Respondents “offer[s] an entirely different style and type of news.” The Complainant states that this claim is not credible given the fact that both the Respondents and the Complainant provide news coverage of Middle Eastern events. As evidence of this, the Complainant states that “Elie Khouri, purporting to act on behalf of Channel, recently contacted one of CNN’s foreign offices and requested that the Complainant, CNN, provide an estimate regarding the cost to Channel of purchasing ‘Arabic political News feature and service’ from CNN. See Supp. Haynes Decl. at Ex. 8 and ¶36. In light of the fact that Mr. Khouri apparently wishes to included CNN content on the Channel web site, this contention is blatantly false.”
Finally, as to the registration and use of
the mark “NFCNN” by Gannett, the Complainant states that Gannett uses three
different stylized versions of the mark “NFCNN” in connection with “promoting
the goods and services of others through distribution of coupons and product
samples via newspapers” (copies of the
NFCNN registrations are provided in Exhibit 9 to the Supplemental Haynes
Declaration (itself Exhibit A) in the Complainant’s Additional Submission). In
view of this, the Complainant opines that “[t]his is hardly the same as
providing competitive news content and is certainly not evidence of any tacit
acknowledgement that Respondents’ activity is anything other than illegal” and
that “the NFCNN Mark used by Gannett is hardly equivalent to the pervasive and
directly competitive use of the CNN Mark by Respondents”.
With respect to bad faith, the Complainant
contends that the Respondents did not refute that they were fully aware of the
Complainant and the fame of its CNN Mark, and in spite of that knowledge,
registered and began using the disputed domain names.
The Complainant notes that the Respondents
offered evidence showing that their use began with their election to adopt the
name “CHANNEL NEWS NETWORK” and to abbreviate the name, in the context of use
within domain names, according to the suggestion contained in a four-page
Lebanon Index evaluation, i.e. to use “the best available abbreviation of the
full Domain Names”. The Complainant
contends, that even assuming this report is legitimate; it does not entitle the
Respondents to trade wholesale on the CNN Mark for their own gain by having
selected a mark that is identical to one of the most famous marks in the world
in connection with news reporting.
As further evidence of prior knowledge, the
Complainant points to the Respondent’s actions in attempting to register “CABLE
NEWS NETWORK LEBANON” as a mark in Lebanon.
Specifically, the Complainant states that on
December 1, 2000, before Respondents claim to have launched their Internet news
services and only days after Respondent Channel was incorporated, the very same
shareholders, including Respondent Khouri, incorporated a second entity, namely
“CABLE NEWS NETWORK LEBANON sarl” and filed a trademark registration for the
same. In that regard, paragraphs 36 and
37 of the Supplemental Haynes Declaration states:
“36.
After filing the Complainant, I received additional evidence indicating that
Mr. Khouri, acting together with the other founding members of Channel News
Network Lebanon sarl, had also formed another Lebanese company under the name
CABLE NEWS NETWORK - LEBANON sarl. I
have attached hereto as Exhibit 7 true and accurate copies of the circulars
emanating from the Commercial Registrar in Lebanon, together with certified
translations, for both CHANNEL NEWS NETWORK LEBANON -- sarl and CABLE NEWS
NETWORK -- LEBANON -- sarl. These
circulars show that CABLE NEWS NETWORK -- LEBANON - sarl was incorporated by
Mr. Khouri and the other shareholders (including Mr. Khouri’s son) on December
1, 2000, only one week after they incorporated CHANNEL NEWS NETWORK LEBANON --
sarl.
37.
In addition, I learned that, using the corporate name CABLE NEWS NETWORK
LEBANON sarl, Mr. Khouri or someone else acting in the name of CABLE NEWS
NETWORK (Lebanon) applied for registration of the mark CABLE NEWS NETWORK on
January 23, 2002. The mark has since
been registered and assigned Reg. No. 89580.
A true and accurate copy of this registration is attached as the first
page of Exhibit 7.”
Hence, the Complainant contends that “[f]rom
the moment Channel was incorporated, Respondents intended to capitalize on the
goodwill CNN has established in its CNN Mark”.
As further evidence of bad faith, the Complainant points to a settlement it made with the Respondents under which the Respondents, as a condition of their September 30th Joint Stay Request, agreed to transfer all the disputed domain names to the Complainant. While the proceeding was stayed, the Respondents notified the Complainant that the former were no longer willing to transfer the names owing to the costs which the Respondents would incur in doing so. On the day its Response was due, the Respondents contacted the Forum to request that the matter be dismissed because neither party filed a written request to reinstate proceedings; this request was denied.
The Complainant views the Respondents’
actions in requesting a dismissal as a bad faith attempt by the Respondents to
divert the Panel’s attention from the fact that Respondents have already agreed
to transfer all the disputed domain names to the Complainant and have
transmitted their unconditional agreement to do so to the Forum. Given this, the Complainant states that any
resolution of this dispute must give effect to the express agreement of the
parties to transfer the disputed domain names to the Complainant. The Complainant cites to, e.g.: Juventus
F.C. S.P.A. v. Sergio Braganca, D2000-1466 (WIPO, Dec. 20, 2000) (ordered
transfer based on respondent’s e-mail agreeing to transfer); Efficient
Networks, Inc. v. Speedstream, D2000-1136 (WIPO, Dec. 10, 2000)
(transferred domain names where respondent’s counsel agreed in writing to
transfer domain names); and United Advertising Publications, Inc. v. Net
Marketing, D2000-0058 (WIPO, Mar. 31, 2000) (ordered transfer based on
parties’ agreement).
2. Respondent’s Additional Submission
First, as to the transfer of the domain names, Respondent Channel admits that it agreed to voluntarily transfer all the disputed domain names to the Complainant but only if that transfer could be handled in cost-free manner to Respondent Channel. Respondent Channel states that its unwillingness to complete the transfer arose out of an inability of the Complainant to secure a “free transfer” within the period of the 10-day stay. This, in turn, left the Respondents with no alternative but to file their Response, which they did. Therefore, the Respondents contend that any failure of the Complainant to secure its transfer of the disputed domain names, lies with the Complainant and not the Respondents.
Second, the Respondents argue, in effect and contrary to the Complainant’s assertion, that Respondent Khouri is not an alter ego of Respondent Channel or of any of the other Lebanese business entities listed as Respondents -- even though Mr. Khouri’s family members have been involved in these entities over time. Accordingly, Respondent Khouri apparently contends that the Response is his alone and therefore does not extend to Respondent Channel and all the other business entities identified in the caption to the Complaint, though the Response “naturally addresses Channel’s use, ownership and control of the disputed domain names.” Therefore, the Respondents submit that since neither Channel nor any of the other business entities is a party to this proceeding, the Complainant failed to lodge its allegations against Channel or any of those entities and thus can not proceed against any of them in this proceeding.
Lastly, the Respondents again argue that by the express wording of the Forum’s October 1st order -- which markedly and irreconcilably differs from the parties’ September 30 Joint Stay Request, the Complaint must be dismissed.
Specifically, the Respondents now point to an October 1st e-mail from the Case Administrator at the Forum which stated, in pertinent part: “The National Arbitration Forum will resume administration of the dispute if either party withdraws its consent to the Stay. Otherwise, the proceeding will be terminated upon settlement or expiration of the Stay, whichever occurs first”. In view of this, the Respondents state that given the requirement imposed by the Forum in its October 1st order for either party to affirmatively request to the Forum that the proceeding be resumed -- as evidently reflected in the October 1st e‑mail, Mr. Khouri naturally waited from October 1st until October 11th (the 10-day stay period plus the additional day accorded him to file a Response) to see if the Complainant filed such a request. Upon learning from the Forum that the Complainant had not filed such a request, Mr. Khouri asked the Forum to allow him to file a “special submission” requesting that the provisions of the October 1st order be invoked and the Complaint dismissed. The Respondents state that, in discussions with the Forum’s Case Administrator on October 11, 2002, the latter recognized the irreconcilable inconsistency between the Joint Stay Request and the October 1st order and, offered to consult with the Forum’s legal staff to resolve the inconsistency but, pending its resolution, was unwilling to enforce the October 1st order. Later on October 11th, the Case Administrator informed the Respondents, that, based on information she received from the Forum’s legal staff, they should submit their argument in favor of dismissal to the Panel as it had the ultimate authority to decide the issue.
FINDINGS
A. Disputed Domain Names
All the disputed domain names are of the form “ccn + x.gTLD” where x is a certain suffix. Given the commonality in suffix types, Appendix A hereto lists these names in alphabetical order and grouped by suffix type, i.e. country name or country abbreviation (268 names); geographic region (17 names); generic or descriptive term (10 names); and a 2 or 3 lettering grouping (12 names).
Of the 325 disputed domain names, 299 of them are registered with DomainBank.com (299 names) located at 824 8th Avenue, Bethlehem, Pennsylvania 18018; another 22 of the names are registered with eNIC (22 names -- all ending in .bz) located at 10 Universal City Plaza, 10th Floor, Universal City, California; and the remaining three names (ending in .biz) are registered with IHOLDINGS.COM, INC. d/b/a DOTREGISTRAR.COM located at 13205 SW 137th Ave., Suite 133, Miami, Florida 33186. Appendix B hereto lists the disputed domain names also in alphabetical order but grouped by registrar.
Hard-copy printouts of WhoIS entries for those disputed domain names originally registered in the name of Respondent Khouri and listing that Respondent as the administrative contact appear in Exhibit A-5 to the Complaint. These names were registered during late November 2000.
B. Complainant’s
CNN Mark
The Complainant has registered its CNN Mark in virtually every country in the world, including the United States and Lebanon. Its US registration, the pertinent details of which follow below, is now incontestable pursuant to § 15 of the Lanham Act (15 U.S.C. § 1065). The Complainant has provided a copy of the registration certificate for this service mark in Exhibit B-2 to the Complaint.
Mark: CNN (stylized)
US registration 1,597,839; registered May 22, 1990
This service mark was registered for use in connection with: “cable and television broadcasting services” in international class 38. This mark claims first use and first use in inter‑state commerce of February 13, 1985.
The Complainant has also provided a copy of its counterpart Lebanese service mark registration (number 61820) for this same mark, registered on November 3, 1993 in Exhibit B-3 to the Complaint. The Complainant also owns numerous trademark registrations and pending trademark applications, both in the United States for marks that incorporate the term “CNN”.
C. Complainant
and its Activities
The Complainant has used its CNN Mark for more than twenty years to identify itself and its cable and satellite broadcast network “CNN”. The Complainant has also used its CNN Mark in conjunction with numerous international web sites and broadcast networks dedicated to bringing targeted news and information to various geographic regions of the world, including several international web sites offered in a native language of each such geographic region. In that regard, the Complainant currently operates native language web sites in Arabic, Spanish, Portuguese, German, Italian, Japanese, Korean and Turkish. Many of these web sites are branded using the CNN Mark and the name of the region or country, such as CNNARABIC.COM and CNNITALIA.IT.
The Complainant, CNN, is an international media and entertainment company with its principal place of business in Atlanta, Georgia. The Complainant’s news and information services are available to more than one billion people worldwide through fifteen cable and satellite television networks (including CNN, CNN Headline News, CNN International, CNNfn, and CNN en Español); three private, geographic‑based networks; two radio networks; CNN Mobile, which provides news and information to mobile devices; CNN Newsource, which is an extensive syndicated news service; and numerous related web sites.
The core of the Complainant’s business is its 24-hour news and information cable television network, “CNN”, which provides in-depth, live coverage of breaking news events and programs on business, finance, weather, sports, entertainment, health and science. The Complainant has more than 600 broadcast affiliates around the world and can be seen in 73 million U.S. households and over 110 million international households. The Complainant also broadcasts CNN International (“CNNI”), the world’s only global 24-hour news network, which can be seen in more than 160 million television households in 212 countries and territories worldwide through a network of 23 satellites. Since September 1997, CNNI has been regionalized into six separate regional editions: CNNI Europe/Middle East/Africa; CNNI Asia Pacific; CNNI South Asia; CNNI Latin America; CNNI North America; and CNNI USA/fn. These editions provide viewers in every region of the world with news and programming of targeted, local interest.
The Complainant was one of the first companies to recognize the power and international reach of the Internet and, accordingly, currently operates numerous different web sites dedicated to providing news and information services worldwide. The Complainant’s flagship web site located at “www.cnn.com”, is a world leader in on-line news and information delivery, and provides 24-hour, up-to-the-minute access to accurate news and information. Among the Complainant’s other web sites are nine web sites dedicated to bringing targeted news and information to various geographic regions of the world in their native language, including Arabic, Spanish, Portuguese, German, Italian, Japanese, Korean, and Turkish. For uniformity in branding, each of these web sites is operated under domain names that include the CNN Mark. To target the sites to local users, the domain names for the sites also include a geographic or language identifier. Examples include <CNNARABIC.COM> (Arabic language site); <CNNENESPANOL.COM> (Spanish language site), <CNNJAPAN.COM> (Japanese language site), <CNNITALIA.IT> (Italian language site), and <CNNEMPORTUGUES.COM> (Portuguese language site). In addition to the foregoing, CNN owns registrations for hundreds of other domain names that consist of the CNN Mark followed by a geographic identifier and that direct Internet users to CNN’s regional web sites. A partial list of CNN’s domain names is attached as Exhibit 1 to the Sams Declaration (declaration of Louise Sams appearing in Exhibit B to the Complaint).
Collectively, the Complainant’s web sites average more than 650 million page impressions per month. In recognition of the quality and journalistic integrity of the Complainant’s web sites, those sites have been honored with numerous awards, including the “Best News Site Award” issued by the American Journalism Review, Yahoo’s Internet Life 5-Star award, New Media’s InVision award and the News/Information Site of the Year from the Academy of Interactive Arts and Sciences.
At least as early as 1980, the Complainant adopted the service mark CNN, which it has continuously used since that time, to identify its numerous electronic news and information services. The Complainant has also used the term “CNN” in the names of all of its broadcast networks, thereby creating a “family” of CNN based marks.
The Complainant has also made extensive use of its CNN Mark in Lebanon, where Respondent Khouri currently resides. Through the Complainant’s prominent and longstanding use of its CNN Mark (among other similar marks) in Lebanon, and throughout the world, that mark has acquired worldwide fame, including in Lebanon, well prior to the actions of the Respondents.
D. Respondent and its Activities
Respondent Khouri has previously resided in the United States for approximately 15 years -- most recently in the State of Virginia, prior to relocating to Lebanon. He is the current or former president of several corporations registered to do business in Virginia, including Respondent Channel which itself was incorporated in February 13, 2001. The Complainant has provided a copy of a status report for this latter corporation as issued by the Virginia Secretary of State (corporate records) in Exhibit 4 to the Haynes Declaration (declaration of John D. Haynes which itself forms Exhibit A to the Complaint).
Respondents Channel News Network, Presidente Advertising Agency, Presidente Advertising Co. sarl, and Hot Sales & Business Center are established valid and existing Lebanese business entities. Presidente Advertising Agency and Presidente Advertising Co. sarl are one company operating as Presidente Agency sarl. Hot Sales and Business Center is a Lebanese registered trademark owned by Presidente Agency sarl on behalf of Channel.
Each of the disputed domain names is now registered to or controlled by Channel. Channel is the sole entity operating web sites at the domain names identified in the Complaint. Respondent Khouri and the other listed entities reserved certain domain names for Channel. Currently, Respondent Khouri is Editor in Chief of Channel and, in that role, is responsible for content that is disseminated by Channel.
With
respect to the history of Respondent Channel, at least as early as the beginning of 1999, Respondent
Channel’s promoters were investigating the prospect of offering Internet
portals for Middle East regional news worldwide. By April, 1999, those promoters commissioned Lebanon Index to
prepare a business plan analysis and market study to determine the commercial
need for region-specific news via the Internet. A copy of the resulting
analysis and study appears in Exhibit H to the Response. In its evaluation, Lebanon Index identified
a high demand for English language web sites that provide non-biased news and
information concerning the Middle East and Lebanon particularly. The Lebanon Index evaluation contemplated an
initial launch of a Lebanese and Middle Eastern Internet portal, but an
eventual expansion to web portals serving regions and countries worldwide. Lebanon Index’s evaluation called for the
reservation of many domain names based upon the “Channel News Network” name followed by a country or regional
identifier (e.g., <ChannelNewsNetworkLebanon.com>,
<ChannelNewsNetworkKuwait.com>,
<ChannelNewsNetworkSaudiArabia.com>, etc.). Because including the
complete company name in this naming protocol was cumbersome, the Lebanon Index
evaluation suggested adopting a suitable abbreviation. To ensure market penetration and to protect
Respondent Channel against cybersquatters, the Lebanon Index evaluation
determined that Channel should “acquire the maximum registration of domain
names in Lebanon, USA and all the available registrars and country extensions
in the world.”
The Lebanon Index evaluation stated
that Respondent Channel’s goals could be met over the course of four to five
years at a cost of approximately US $30,000,000.00. As 1999 and 2000
progressed, Channel’s promoters actively sought investment money and
aggressively went about establishing a business designed to achieve the goals
set forth in the Lebanon Index evaluation.
By the end of November 2000, Channel was formed and had registered most
of the many domain names contemplated in the Lebanon Index evaluation and many
of the domain names disputed in this action.
By this time, investors and early consumers had expressed a need for a
shorthand way to express the complete corporate name for the purpose of typing
the domain names. Many of the domain
names included the entire corporate name, but others included the “cnn” letter
string – as an abbreviation for Respondent “Channel News Network”.
On November 24, 2000, Respondent Channel was formed as a Lebanese Limited Liability Partnership Company (Société à Responsabilité Limitée (“S.A.R.L.”)) pursuant to its Articles of Association. (a copy of these articles, in English translation, appear in Exhibit B to the Response). Respondent Khouri received fifty of 500 issued shares when Channel was formed. On April 22, 2002, Respondent Khouri, through a transfer deed of shares, sold his shares to Mr. Fadi Sobhi El-Qach and transferred 200 issued shares from his son, Elie Fawzi El-Khoury, to Mr. El‑Qach. A copy of a corresponding deed of transfer appears in Exhibit C to the Response.
The founding vision of Respondent Channel was to provide a virtual representation of Lebanon to the rest of the world. Channel’s flagship web site, <ChannelNewsNetwork.com>, offers users comprehensive news coverage of local Middle Eastern news, politics, business, health, travel, and tourism. Since launching its flagship site, Channel has established hundreds of web sites targeted to Middle Easterners living in different countries and regions around the world, each providing the same brand of coverage available under the ChannelNewsNetwork.com web site.
Furthermore, on December 1, 2000 --
one week after Respondent Channel was incorporated in Lebanon, Respondent
Khouri and others, including his son, formed another Lebanese company under the
name “CABLE NEWS NETWORK - LEBANON, sarl” (as indicated in copies of circulars,
from the Commercial Register in Lebanon, provided in Arabic and English
translation, in Exhibit A-7 to the Complainant’s Additional Submission).
After holding the disputed domain names for over a year, Respondent Channel began posting news content to the Internet under most of the disputed domain names. Respondent Channel’s web sites are currently organized into regional sub-sites that it brands prominently with variants of term “CNN”, including, e.g., CNNAMERICA and CNNAFGHANISTAN. Printouts from several of the web sites posted to the disputed domain names are attached as Exhibit A-2 to the Complaint. In addition to the news services that Respondents offer on their sites, Respondent Channel also provides links to other commercial web sites that it operates, such as “CNNStores.com,” which offers online shopping to visitors of that news site.
Respondent Channel
invested significant time and money into promoting its web sites including
those featuring the “cnn” letter string.
In June 2001, Respondent Khouri was featured in the magazine Masculin for his role as Editor in Chief of Channel’s news web sites. The article about Mr. Khouri (a copy of which appears in Exhibit I to the Response) features the “CHANNEL NEWS NETWORK” and “CNNME” marks as well as the <cnnme.com> domain name. Later, Respondent Channel’s “CHANNEL NEWS NETWORK MIDDLE EAST”, “CHANNEL NEWS NETWORK WORLDWIDE”, “CHANNEL NEWS NETWORK AMERICA” and “CHANNEL NEWS NETWORK AFGHANISTAN” trademarks and the corresponding <cnnme.com>, <cnnww.com>, <cnn-us.com>, and <cnnaf.com> domain names were featured in the January 2002 edition of the Country Commercial Guide Lebanon published by the Embassy of the United States of America in Beirut, Lebanon (a copy of that guide appears in Exhibit J to the Response). Respondent Channel was also the subject of an entire half hour broadcast of the television program, Inside Business, broadcast locally and by satellite in early 2001 by NBN, a Lebanese national television broadcasting network (a videotape of that broadcast was provided as Exhibit K to the Response). Respondent Channel and its “cnn”-based domain names were also featured in the Technology Section of the March 25, 2001 edition of the Al Anwar Daily News