The United States District Court for the Eastern District of Virginia, Alexandria Division, recently issued a noteworthy in rem U.S. Anticybersquatting Consumer Protection Act (ACPA) decision, Cable News Network L.P., L.L.L.P. v. CNNEWS.COM , which found that cnnews.com, a Chinese news information website, violates the ACPA. In particular, the website: (1) was registered to a company, Maya HK, located in China; (2) was registered with a Chinese registrar, Eastern Communications Company Limited (Eastcom); (3) was supposedly targeted solely at customers in China; (4) was in Chinese; and (5) offered goods only to Chinese residents, who had to pay with Chinese currency.

The court found that the domain name was being used in U.S. commerce because (1) providing news and information on the Internet constitutes “commerce”; (2) the Internet is global; (3) a “not insubstantial” number of Chinese speakers reside in the U.S.; (4) “.COM” is “essentially an American top-level domain”; and (5) CNN is a famous mark in the U.S. and internationally. The court then held that the cnnews.com domain name infringed the plaintiff’s CNN mark, since the CNN mark is famous and strong, the domain name wholly incorporates the CNN mark, and the website offers services that compete directly with CNN’s services. Despite the finding of trademark infringement, the court found that CNN had not established dilution, since it had not demonstrated actual economic harm to its CNN mark as a result of the cnnews.com domain name.

Although the court recognized that “[i]t is not definitively settled whether the ACPA’s in rem provisions require a showing that the registrant or user of an offending domain name acted in bad faith,” the court found that bad faith is required. The court found bad faith evident because Maya HK transferred the domain name to itself from a related party following notice of the dispute by CNN. Moreover, Maya HK did not demonstrate any intellectual property rights in the domain name, the inclusion of the English word “news” in the domain name being suggestive of the fact that Maya HK’s intended audience included English speakers. In addition, the cnnews.com website contained some English language content and links to other English language websites.

The court also rejected Maya HK’s constitutional and jurisdictional arguments. Maya HK asserted that the application of U.S. law to compel the transfer of the domain name registration certificate would violate due process in disrupting the contract between Maya HK and Eastcom; transfer of the domain name registration would constitute an unconstitutional extraterritorial injunction; and the court should apply the doctrine of forum non conveniens , since China would be a better forum. The court reasoned that Eastcom had deposited the domain name registration with the court; the registry, Verisign, is located within the court’s judicial district; an order transferring the domain name registration is accomplished by conduct wholly within the court’s judicial district; Maya HK’s forum non conveniens motion was untimely, since Maya HK filed the motion eight months into the litigation; and the forum was proper, since the domain name registration certificate and registrar were located within the forum.