To coincide with the release of the Narnia film, Scottish
parents Richard and Gillian Saville-Smith purchased their son
the domain name "Narnia.mobi".
They probably didn't realise that it would result in
an embroiled and expensive legal debate with the CS Lewis
estate and dealing with a lengthy complaint lodged with the
World Intellectual Property Organisation in Switzerland.
The Lion, the Witch and the WIPO complaint is yet another
domain name dispute involving a party using its intellectual
property rights to seek control over a domain name. These
disputes are increasing as a result of the ever expanding world
of computers and the Internet.
Trademarks, passing off and the Trade Practices Act
Most domain name disputes will potentially involve claims
for trademark infringement, passing off and breach of the
A trademark can be infringed when a person uses a sign
(here, the domain name), that is substantially identical or
deceptively similar to the trademark. Often, alongside a claim
for trademark infringement runs a claim for passing-off and a
claim for misleading or deceptive conduct under the TPA.
But these claims involve tricky questions when applied to
the cyber-world; has there been 'use' of a sign
by registering a domain name and has the domain name been used
in 'trade or commerce' are just a few. These
questions aside, the claims also face hurdles which stem from
the political and jurisdictional boundaries created by the
global reach of cyberspace.
Although some cases have run overseas (for example, the US
trademark case brought by Citigroup against the registrant of
the domain name citigroup.co.uk and citigroup.com) there is
minimal domain name dispute case law in Australia.
International issues, WIPO and the UDRP
The international reach of domain names and associated
problems in domain name disputes has seen the establishment of
a number of international bodies aimed at assisting to resolve
domain name disputes.
These include WIPO, an independent intergovernmental
organisation promoting protection of intellectual property and
the Internet Corporation for Assigned Names and Numbers
(ICANN), a not-for-profit partnership of people which aims to
keep the Internet stable.
Through the cooperation between WIPO and ICANN, a Uniform
Domain Name Dispute Resolution Policy (UDRP) has been developed
and administered. It currently applies to all .biz, .info,
.name, .net and.org top-level domains and some country code
Despite its suggested flaws, UDRP is aimed at creating a
uniform procedure for resolving cyber domain name disputes
which is quicker and often cheaper than relying on the black
hole of the Court litigation process.
Whether or not those flaws are ones that trademark owners
and the like wish to test, one thing is certain at least with
The Lion, the Witch and the WIPO complaint. The simple domain
name birthday present for Mr and Mrs Saville-Smith's
son is likely to be much more expensive than they had
IP is the legal property in the innovation in your business and it is that which drives your revenue and profit growth.
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