CBS Gets Black Eye in Battle Over Domain Name
CBS claimed in the court filing that the domain name was rightfully its because the television industry relies on call letters to identify itself, and the same should apply now that the medium is spilling over to the Internet. CBS also claimed that TNN was a famous mark used exclusively to identify The Nashville Network and that visitors to www.tnn.com would confuse it with The Nashville Network.
The network also stated that without the use of the domain name, it is "completely eliminated" from identifying its goods and services on the Internet and that puts it at a "critical disadvantage" in the "highly competitive television industry."
U.S. District Judge Nora M. Manella did not accept CBS' arguments, saying, "Nashville's claim may be reduced to the argument that because its three-initial registered mark is now famous and would be the most convenient Web site name for The Nashville Network, it should be entitled to enjoin The Network Network from using the same three initials as part of the domain name it registered nearly half a dozen years ago and has been using continuously ever since - a domain name based on Network's prior use in commerce of the same three initials since 1989.
"The fact that Nashville missed its opportunity to select the domain name it would now like to have is not sufficient to state a claim of infringement under the federal trademark law, particularly where, as here, there can be no genuine risk of confusion - initial or otherwise - by any consumer of reasonable prudence and no argument that Network has sought or is now seeking to trade on Nashville's good name."
In her ruling, Manella went on to say, "Unlikely, indeed, is the hapless Internet searcher who, unable to find information on the schedule of upcoming NASCAR broadcasts or 'Dukes of Hazzard' reruns, decided to give up and purchase a computer network maintenance seminar instead."
A spokesman for The Network Network said the company did everything possible to avoid litigation, including offers of a link from their home page directly to The Nashville Network's Web site. He said the The Network Network never offered to sell the domain name to CBS because their loyal customers had come to know their Web address. Also, he stated that CBS never made an offer to buy the name, because it insisted all along it had the legal right to the domain name.
"Taking on a media giant like CBS is clearly not an easy task," said Clive Hermann, president/founder of The Network Network. "There is no doubt that it would be valuable for CBS to have a Web site for The Nashville Network with the same domain name. But simply because they are a big company and very much want something which belongs to us doesn't necessarily mean they are entitled to it. We are not 'cybersquatters.' We have been using both the TNN trademark and the domain name for years without objection, and the Web site has become crucial to our business as well."
A spokeswoman for CBS said the company had not decided whether to appeal and would not comment further. The Nashville Network did not respond to a request for comment on the ruling.
As soon as the ruling was handed down, The Network Network posted a message on its Web site which reads: "We, at The Network Network, are pleased that we can finally put this long running litigation to bed and get on with business as normal again. Expect to see our new, improved, 2000 Seminar Schedule posted to this site shortly. As most of you know, we have been holding off on printing any new promotional material until we knew for certain which domain name we would be using. Now that we know, we will resume our marketing with a vengeance."
The Network Network has filed a motion to have CBS pay its attorneys fees and costs. The motion is scheduled to be heard on May 1.