A while back we reported about the domain dispute surrounding the registration of the domain name Narnia.mobi. This domain had been registered by parents as a gift to their Narnia obsessed child. Since the parents refused to return the domain name to the Narnia trademark holders, they were eventually forced to surrender the domain name. How the WIPO came up with their decision and the details surrounding this case is what we would like to analyze today...
The administrative panel of the WIPO Arbitration and Mediation Center ordered that the domain name “narnia.mobi” be returned to the claimants, as such registration infringed on the claimants’ trademark rights. This case spurred controversy and attracted media attention due to the fact that the respondents were regular citizens who bought this domain name as a birthday gift for their son, and did not intend to resell it for profit.A recent decision of the United Nation’s WIPO administrative panel has merited media attention due to the unusual nature of the claim in question. In this case, the claimants were the estate of the late C.S. Lewis, which holds trademarks and other proprietary rights in various works of C.S. Lewis. The case of C.S. Lewis (PTE) Ltd. v. Richard Saville-Smith (WIPO Case No. D2008-0821), concerned the estate’s rights to the trademarks inherent in “The Chronicles of Narnia” series, and in particular the trademark in the word “Narnia.”
The claimants are owners of the Websites at “narnia.com” and “narnia.co.uk.” In September 2006, the respondents, who were from Scotland, bought the domain name, “narnia.mobi” for £70. They alleged that their sole intention in acquiring this domain name was to present it as a gift to their son on his 11th birthday, as he is a fan of C.S. Lewis and his works. The respondents claimed that their son would have used the domain name as an e-mail address. According to the respondents’ claims, the respondents did not intend to resell the registered domain name for profit or to derive revenue from the Website.
Notwithstanding, upon further inspection, it became evident that “[t]he disputed domain name resolves to a parked Web page provided by Sedo (an Internet search engine devoted to the auctioning of domain names), containing "sponsored links" to commercial Websites, including links to Websites offering for sale merchandize and apparel related to "The Chronicles of Narnia" books and movies.” This evidence was found to indicate that, contrary to the respondents’ assertion, the respondents derived commercial benefits from the Website.
The fact that the disputed domain name contained a well-known trademark, combined with evidence indicating the likelihood that the respondents derived commercial benefit from the registered domain name contributed to the panel’s determination that the respondents’ registration and use of the domain name narnia.mobi was in bad faith. In subsequent news reports, the respondents claimed to be shocked by the decision, stating that their intentions never included making profits from the registered sites.
What other domain names have been registered by the respondents?
Between September 28 and 30 of 2006, the respondents also bought the following domain names on the dotMobi auction, “drwho.mobi,” “mi5.mobi,” “mi6.mobi,” “middleearth.mobi,” “spooks.mobi,” “tardis.mobi,” “ovaloffice.mobi,” “pentagon.mobi,” “primeminister.mobi,” “scottishparliament.mobi,” “thequeen.mobi,” and “uspresident.mobi.” Reportedly, all of the above domain names, except “middleearth.mobi,” relate to parked Websites provided by Sedo.
The respondent stated that he and his wife bought the above Websites for their own entertainment. The respondents also registered the domain names “freenarnia.com” and “freenarnia.mobi” two weeks after the complaint against them was filed with the panel. The panel found these later registrations to be “disturbing” and indicative of the respondents’ bad faith.
How did the respondents use the registered domain names?
Although the respondents claimed that their intention was to gift the disputed domain name to their son on his 11th birthday, while the other registrations were made “just for fun,” at the date of filing of the claim, the respondents have not initiated any use of the registered domain names. The WIPO panel drew a negative inference from this non-use, stating that “the passive holding of a domain name can be considered as bad faith where it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name that would be legitimate.” Such a negative inference was drawn by the panel in this case.
Does the use of a domain name as an e-mail address constitute “legitimate use”?
The WIPO panel conceded that in a number of earlier decisions issued by the panel it was acknowledged that the use of a domain name as an e-mail address may be sufficient to constitute “legitimate use” of that domain name. Notwithstanding, the panel stated that these earlier decisions can be distinguished from the narnia.mobi case on the basis of the fact that in the other cases, “normally the domain name was intended for persons known by that name.” In the narnia.mobi case, however, the registrants’ use of the Website as a future e-mail address by their son was found to constitute an illegitimate use.
Source: DomainNews.com on November 12th, 2008 - Posted by Roland G. Buck - Chief Editor Chief Editor