[ncdnhc-discuss] CNN v. cnnews.com Case

[James Love]

----- Original Message ----- 
From: "Louis Touton" <touton at icann.org>
To: <james.love at cptech.org>
Sent: Wednesday, April 17, 2002 8:09 PM
Subject: CNN v. cnnews.com Case

Jamie,

Here is the summary you requested regarding the CNN v. cnnews.com case:

A central feature of the Uniform Dispute Resolution Policy is that
registrars will remain neutral concerning trademark-based disputes over
domain names.  (This was a major change from the prior Network Solutions
dispute policy.)  Instead, these disputes are to be resolved by courts
or, in cases of abusive registrations, administrative panels (see
paragraph 4, UDRP).

To promote registrar neutrality, the policy contemplates that registrars
need not be brought in as parties to the disputes.  (In fact, paragraph
6 of the policy specifically states that domain-name holders will not
name their registrars as parties.)  In this vein, paragraph 3 of the
UDRP requires that registrars implement court orders and administrative-
panel decisions in trademark/domain name disputes even though the 
registrars are not parties to the proceedings:

   3.  Cancellations, Transfers, and Changes. We will cancel, transfer 
   or otherwise make changes to domain name registrations under the 
   following circumstances:

      * * *

      b. our receipt of an order from a court or arbitral tribunal, in 
      each case of competent jurisdiction, requiring such action; and/or

      c. our receipt of a decision of an Administrative Panel requiring
      such action in any administrative proceeding to which you were a 
      party and which was conducted under this Policy or a later version 
      of this Policy adopted by ICANN.

In the CNN v. cnnews.com case, the registrar for the domain name,
Eastern Communications (also known as Eastcom), filed a "Registrar 
Certificate" with the United States District Court for the Eastern 
District of Virginia on 14 March 2001 stating:

   Through the deposit of this Registrar Certificate with the Registry
   of the Court, EASTCOM hereby tenders to the Court complete control 
   and authority over the registration for the CNNEWS.COM domain name
   registration record.  

This type of registrar certificate provides the court with "in rem" 
jurisdiction over the domain name, but is not intended to consent to
the court's exercising "in personam" jurisdiction over the registrar.

After various hearings (attorneys for both disputing parties were 
present) the court issued an order on 11 January 2002 transferring 
the domain name:

   It is now hereby ORDERED that the domain name CNNEWS.COM is
   transferred to Plaintiff Cable News Network LP, LLLP.

This form (particularly the phrase "is transferred") of order indicates
that the court is exercising its in rem jurisdiction to transfer an 
item (here, the domain name) that has been placed within the court's 
control.

Because the registrar had expressly placed the domain name cnnews.com 
under the "complete control and authority" of the court, and that court 
had entered an order of transfer, paragraph 3(b) of the UDRP (see above)
provides that the regisrar will comply with that order. 

The domain-name holder has appealed the Virginia district court order to
the United States Court of Appeals for the Fourth Circuit.  Under
federal court procedures in the United States, the filing of an appeal
does not stop the effectiveness of a district court order.  

Registrars are obligated by their registrar accreditation agreements
with ICANN to abide by the UDRP (and other consensus policies as well). 
Section 3.8 of the current version of the registrar accreditation
agreement states:

   3.8 Domain-Name Dispute Resolution. During the Term of this
   Agreement, Registrar shall have in place a policy and procedures 
   for resolution of disputes concerning Registered Names. Until 
   different policies and procedures are established by ICANN under 
   Section 4, Registrar shall comply with the Uniform Domain Name 
   Dispute Resolution Policy identified on ICANN's website
   (www.icann.org/general/consensus-policies.htm).

ICANN received a letter from an attorney for CNN enclosing the registrar
certificate and the court order, reporting difficulties in communicating
with the registrar.  On 2 April, we forwarded the letter and its
enclosures to Eastern Communications (the registrar) requesting, "Please 
look into this right away and ensure that Eastern Communications 
promptly fulfills its responsibilities."

In response to an inquiry from a US lawyer representing the
domain-name holder, on 4 April we advised that attorney that "Absent a
stay of the effect of this [11 January] order, EastCom is obliged to
comply with that order under its accreditation agreement with ICANN." 
On 12 April, the domain-name holder obtained a stay from the Virginia
district court.  On 13 April 2002 we advised the parties (through their 
attorneys) that, because the Virginia court had ordered a stay of its 
11 January order, the domain name should not be transferred under 
paragraph 3(b) of the UDRP at this time.

Best regards,

Louis Touton



--------------------
James Love, mailto:james.love at cptech.org, http://www.cptech.org
voice +1.202.387.8030, mobile +1.202.361.3040, fax +1.202.234.5176