Cable News
Network LP, LLLP v. Ahmed Latif
Claim Number: FA0110000100709
PARTIES
Complainant is Cable News Network LP, LLLP, Atlanta, GA (“Complainant”) represented by David J. Stewart, of Alston & Bird, LLP. Respondent is Ahmed Latif, Dubai, DXB, AE (“Respondent”) represented by Stephen H. Sturgeon, of Law Offices of Stephen H. Sturgeon & Associates.
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <cnnarabic.com>, registered with Network Solutions.
PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on October 18, 2001; the Forum received a hard copy of the Complaint on October 22, 2001.
On October 23, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name <cnnarabic.com> is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 24, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 13, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@cnnarabic.com by e-mail.
A timely Response was received and determined to be complete on December 3, 2001.
Complainant’s Additional Response was filed December 8, 2001.
On
December 17, 2001, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel,
the Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is Cable News Network, LP, LLLP, One CNN Center, Atlanta, Georgia.
Complainant has used the service mark, CNN, for more than twenty years to identify itself and its world-famous cable and satellite broadcast network CNN.
CNN is an international media and entertainment company with news and information services available to more than one billion people worldwide through fourteen cable and satellite television networks (including CNN, CNN Headline News, CNN International, CNNfn, CNN/Sports Illustrated and CNN en Espanol); three private, place-based networks; two radio networks; eleven web sites; CNN Mobile, which provides news and information to mobile devices; and CNN Newsource, the world’s most extensive syndicated news service.
CNN’s web site located at <cnn.com> is a world leader in on-line news and information delivery, and provides 24-hour, news and information.
Among CNN’s ten other web sites are seven international web sites dedicated to bringing news and information to various geographic regions of the world in their native language. Each of these web sites is operated under domain names that include the CNN mark, such as cnnturk.com, cnnenespanol.com, cnnemportuges.com.
At least as early as 1980, CNN adopted the service mark CNN, which CNN has continuously used since that time to identify its numerous electronic news and information services. CNN has also used the term “CNN” in the names of all of its broadcast networks, thereby creating a “family” of CNN marks. CNN owns valid and enforceable service mark rights in the CNN marks.
In recognition of CNN’s exclusive rights in the CNN marks, the United States Patent and Trademark Office has granted CNN numerous registrations for marks containing the term “CNN”, including Reg. No. 1,597,839 for the stylized mark CNN. This registration is now incontestable pursuant to law and constitutes constructive notice of CNN’s ownership of the marks. CNN further owns registrations for the CNN mark in the United Arab Emirates, where Respondent reportedly resides. These registrations include Reg. No 5851. Through CNN’s prominent and longstanding use of its CNN marks in the UAE, the marks acquired fame in the UAE well prior to the actions of the Respondent complained of.
Respondent registered the domain name <cnnarabic.com> on December 20, 2000.
The domain name <cnnarabic.com> is confusingly similar to the CNN mark and the CNN.com domain name, and consumers are certain to associate CNN with the domain name <cnnarabic.com>.
Respondent has no connection or affiliation with CNN, nor has CNN granted 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 of the CNN mark, Respondent has no legitimate rights or interests in a domain name containing CNN’s famous mark. Respondent was on notice of CNN’s exclusive registrations. Respondent can have no rights or interests in the domain name.
Respondent registered and uses the domain name in bad faith. It is inconceivable that Respondent could have registered the domain name without knowledge of CNN’s rights in the CNN marks. Even if Respondent claims such ignorance, CNN’s registrations constitute constructive notice of CNN’s rights.
Respondent’s lengthy nonuse and passive holding of <cnnarabic.com> is further evidence of bad faith use of the domain name. Respondent’s holding of the domain name is now blocking CNN from using the domain name for legitimate business purposes.
B. Respondent
Respondent is Ahmed Latif, located at Ziyad, Dubai, United Arab Emirates.
Respondent’s passport shows that Respondent’s complete name is Ahmad M.A.W.A. Latif A. Samarai, hence his name is often written as Ahmad Samarai. The domain name registration information contains his name as Ahmad Latif.
Respondent holds an MBA from Humberside University (UK) and is in the final stages of a PhD degree in economy from the American University of London. Respondent has an extensive background in the investments field in the Arab world and is well known in this field through public coverage and media interviews. Respondent is associated with the Union Arab Banks and is an external consultant for investment affairs with the United Nations through (ESCWA).
Respondent has been operating a business in order to develop an investment link between Arab countries by the name of Consolidated National Network for Arabic Investments since the second quarter of 2000 and has engaged in conducting a business plan for the company, doing research and meetings to find strategic partners, showing investor scenarios to the companies operation activity, meeting web developers and IT companies to handle the project, and discussing the visions, marketing plan, feasibility studies with certain parties in order to get the project alive.
Respondent has no intention for commercial gain to misleadingly divert consumers or to tarnish any alleged trademark/service mark rights. Respondent did not register the domain name in question for the purpose of selling, renting, or otherwise transferring it to Complainant or a competitor. Respondent did not register the domain name to prevent Complainant from registering it.
Complainant does not provide any convincing legal rationale, legal support or proof with respect to the issue of whether the alleged trademark “cnn” is confusingly similar to the domain name <cnnarabic.com>. Complainant does not allege that it has a trademark for the word “cnnarabic” or “cnnarabic.com.”
Complainant fails to sustain its burden of proving that Respondent did not have any legitimate interest in the domain name.
Respondent engaged in the preparation for the use of the domain name in connection with a bona fide offering of goods and services before any notice of the dispute. Respondent has been developing and operating the business Consolidated National Network for Arabic Investment that will use the domain name in question.
There is no evidence presented by Complainant to show any circumstance set out in the UDRP, or other circumstance of bad faith. Complainant has failed to establish bad faith.
C. Additional Submissions
Complainant argues that Respondent’s contention that CNN cannot own exclusive rights to the letter string CNN, is incorrect. There is no other company with a national registration of any mark that includes the letter string CNN at the outset of a mark in the United States (where Latif purports to be preparing to do business). Latif’s planned use of the Domain Name and CNNARABIC mark will constitute a clear-cut case of trademark dilution.
Complainant submits decisions from the U. S. District Court for the Eastern District of Virginia, holding in separate actions, that the domain names <cnnturkey.com> and <cnnjapan.com> are confusingly similar to the CNN mark and were registered and used in bad faith under the Anticybersquatting Consumer Protection Act.
Complainant responds to Respondent’s claim to good faith because of the use or planned use of the domain name to offer goods or services to the public by contending that an infringing use cannot be a bona fide, good faith use; and knowledge of the trademark’s owner’s mark renders the registration and use bad faith.
FINDINGS
1. Complainant is an international media and entertainment company, which has used the service mark CNN for a number of years and holds registrations for the mark, CNN, in the United States and the United Arab Emirates.
2. CNN uses the term “CNN” in the names of all of its broadcast networks, thereby creating a “family” of CNN marks. By virtue of CNN’s long-term, continuous, and exclusive use of the marks CNN and its other marks, CNN owns valid and enforceable service mark rights in the CNN marks.
3. Respondent, at the time of the registration of <cnnarabic.com>, was on constructive notice of Complainant’s rights in the CNN marks.
4. Respondent has, since the year 2000, been operating a business known as “Consolidated National Network for Arabic Investments”.
5. On December 20, 2000, Respondent registered the Domain Name <cnnarabic.com>.
6. CNNARABIC is meant to represent “Consolidated National Network for Arabic Investments”. Respondent intended to use the Internet in his business activities.
7. Respondent has begun work in organizing the “Consolidated National Network for Arabic Investments” enterprise but has not yet begun to use the web site at <cnnarabic.com> as a function of the business plan.
8. The Domain Name, <cnnarabic.com>, is confusingly similar to Complainant’s mark, CNN.
9. Respondent has no rights or legitimate interests in the Domain Name, <cnnarabic.com>.
10. Respondent registered and is using the Domain Name, <cnnarabic.com> in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or
Confusingly Similar
Respondent does not contend that he was without notice of Complainant’s CNN Mark. Respondent contends that the registration of three letters for limited services in one country does not give a registrant the right to all domain names containing the three letters throughout the world. A finding to that effect would be a dangerous precedent, Respondent contends. Since Complainant has no service mark registration for the word “cnnarabic”, Complainant’s case must fail, Respondent argues.
Complainant owns the registered mark, CNN, which it has continuously and exclusively used to identify itself and its world-famous cable and satellite broadcast network. Respondent’s <cnnarabic.com> domain name is confusingly similar to Complainant’s CNN mark because the disputed domain name is comprised of Complainant’s mark and a generic term. See Sony Kaisha v. Inja Kil, D2000-1409 (WIPO Dec. 9, 2000) finding that neither the addition of an ordinary descriptive word, nor a suffix such as “com” detract from the overall impression of the dominant part of the name in each case, namely the trademark “Sony”, and thus Paragraph 4(a)(i) of the Uniform Domain Name Dispute Resolution Policy is satisfied. See also AXA China Region Limited v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) finding that common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights.
The citation by Complainant of the decision in Cable News Network LP, LLLP v. CNNJAPAN.COM, Civil Action No. 00-1173-A, in the United States District Court for the Eastern District of Virginia is persuasive. In that Opinion it is stated “(the) registration and use of the domain name CNNJAPAN.COM imitates the famous name and mark CNN, has caused and is likely in the future to cause confusion.” A similar result was reached in the same United States District Court regarding the Domain Names cnnturkey.com, cnnturk.com, cnntr.com, cnntr.org, cnn-tr.com, cnn-tr.net and cnnturkiye.com. All of those Domain Names were transferred to this Complainant.
There is no doubt that the domain name <cnnarabic.com> is confusingly similar to Complainant’s famous mark, CNN.
Rights or
Legitimate Interests
Complainant shows that it is the owner of the service mark contained in the domain name. This gives Complainant exclusive right to use the mark. See America Online, Inc. v. Tencent Communications Corp., FA93668 (Nat. Arb. Forum Mar. 21, 2000). It is clear that Respondent is not an agent or licensee of Complainant. It can be inferred that Respondent was never known as CNNARABIC prior to registration of the domain name. As a result of Complainant’s showing, and Respondent’s apparent lack or rights and legitimate interests in the domain name, the burden must shift to Respondent to demonstrate his rights and interests in the domain name. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000). Respondent may do so by any of the methods set out in the Uniform Domain Name Dispute Resolution Policy.
Respondent contends that such a showing can be made under Paragraph 4(c)(i) of the Policy, which reads “before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services…”
Respondent presents his affidavit and the affidavits of two associates that state that he was developing a business plan, engaged in research and meetings, traveled to other countries to find partners, showed investor scenarios, discussed website development, and discussed marketing plans, and feasibility studies in order to publish the website and other activities. Respondent has shown that he did these things in regard to his business, “Consolidated National Network for Arabic Investments.”
The question raised is whether preparations to commence a business named “Consolidated National Network for Arabic Investments” give Respondent the right, under the Paragraph 4(c)(i) of the Policy, to infringe or dilute the service mark of the Complainant? Based upon the submissions by both parties and the inferences that can properly be drawn from the facts contained therein, the answer in this case must be no. Respondent has not been doing business as CNNARABIC. He has been doing business as “Consolidated National Network for Arabic Investments”. Respondent attempts no explanation as to why a domain name not containing the CNN mark would not have been effective in a domain name to represent Respondent’s “Consolidated National Network for Arabic Investments” enterprise.
“The offering of goods and 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).” Two Systems Enterprises Co., Ltd. v. Sonie’s Creations, AF 0911 (eResolution Sept. 7, 2001). See also Oly Holigan, L.P. v. Private, FA 95940 (Nat. Arb. Forum Dec. 4, 2000); America Online Inc. v. John Deep Buddy U.S.A. Inc., FA 96795 (Nat. Arb. Forum May 14, 2001). Complainant contends that Respondent has made no use of the domain name to date. This is further evidence that Respondent has no rights or legitimate interest in the domain name. See Valigene Corp. v. MIC, FA94860 (Nat. Arb. Forum Aug. 1, 2000).
Respondent is found to have no rights or legitimate interests in the Domain Name <cnnarabic.com>.
Registration and
Use in Bad Faith
Complainant bears the burden of proving registration and use of the domain name in bad faith. It may do so under any of the methods set out in Paragraph 4(b) of the Uniform Domain Name Dispute Resolution Policy or by any other method calculated to show bad faith that is cognizable under Paragraph 4(b).
Complainant fails to show that Respondent registered the domain name for the purpose of selling, renting or transferring it, as set out in Paragraph 4(b)(i). Though Complainant contends that it is prevented from registering <cnnarabic.com> because of Respondent’s prior registration, Complainant fails to allege a pattern of conduct to support a finding under Paragraph 4(b)(ii). Complainant does contend that Respondent registered the domain name with actual and constructive knowledge of Complainant’s service mark and that since this is true, Respondent did so with a purpose of disrupting the Complainant’s business. Complainant contends that Respondent’s stated use of the web site for some financial purpose conflicts with Complainant’s online financial and investment news and information, to various regions of the world in their native language. This makes them competitors, it is alleged, in the matter of providing financial and investment information.
Complainant goes on to contend that consumers interested in determining whether CNN has an Arabic language site are substantially likely to look for the site under the Domain Name <cnnarabic.com> in light of CNN’s well-established naming protocol. Respondent’s purported plans for use of the domain name will therefore result in Respondent driving traffic to his site that is actually looking for CNN, in infringement of CNN’s rights, because of CNN’s fame in the financial and investment worlds. And even if the content of the site Respondent plans to launch clarifies to Internet users that the site is not associated or affiliated with CNN, the use would still infringe CNN’s mark because of the initial interest confusion that drove Internet traffic to Respondent’s site by mistake.
Respondent was, at the very least, on constructive notice of the rights of Complainant in its mark, CNN. The inference can be logically drawn that Respondent was upon actual notice, as Complainant strongly contends. Respondent must have anticipated that the Domain Name, <cnnarabic.com> would attract, for commercial gain, Internet users to Respondent’s web site, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site. Paragraph 4(b)(iv) proscribes such conduct as bad faith. When a web site will ultimately result in consumer confusion or where any future use of an inactive web site of a domain name would do nothing but cause confusion with the Complainant’s mark, then the problem is presented which Paragraph 4(b)(iv) is calculated to avoid. See Hewlett-Packard Co. v. Wieland, FA 95852 (Nat. Arb. Forum Dec. 6, 2000) and CBS Broadcasting Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000). See also Alitalia-Linee Aeree Italiane S.p. A v. Color Digital, D2000-1260 (WIPO Nov. 23, 2000).
Respondent is found to have registered and is using the Domain Name, <cnnarabic.com> in bad faith.
IT IS THE DECISION OF THIS PANEL THAT THE DOMAIN NAME, <CNNARABIC.COM>, NOW REGISTERED TO THE RESPONDENT, AHMED LATIF, BE TRANSFERRED TO THE COMPLAINANT, CABLE NEWS NETWORK LP, LLLP.
Tyrus R. Atkinson, Jr., Panelist
Dated: December 31, 2001
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