Canada: Gifts Not On The List - The Narnia Decision

Last Updated: April 2 2009
Article by Jennifer A. Ross-Carriere

Most Read Contributor in Canada, September 2018

A World Intellectual Property Office (WIPO) panel ordered the transfer of the NARNIA.MOBI domain name to C.S. Lewis (PTE.) Ltd., the owner of the NARNIA trade-mark, after finding that the registrant did not have a legitimate interest in the domain name and had registered the domain name in bad faith.

In September 2006, Richard Saville-Smith registered the domain name NARNIA.MOBI following the close of the sunrise registration period for the dot-mobi rollout. Mr. Saville-Smith, owner of the Saville-Ferguson media and PR agency with his wife, claimed the registration was a future present for his then-nine-year-old son, a fan of C.S. Lewis's The Chronicles of Narnia series. Saville-Smith said he planned to give his son the e-mail address associated with the domain name for his 11th birthday.

The initial registration coincided with the release of the first Chronicles of Narnia blockbuster movie, and the time that the son would received the gift would have corresponded to the release of the second Narnia film in the United Kingdom and Northern Ireland. In the meantime, the domain name resolved to a parked web page provided by global domain name marketplace Sedo. The page contained sponsored links to commercial websites, including links to websites offering for sale merchandise and apparel related to The Chronicles of Narnia books and movies.

The complainant, C.S. Lewis (PTE.) Ltd. owns trade-marks, copyright and other proprietary rights in the literary works of C.S. Lewis, including trade-mark registrations in various countries for the trade-mark NARNIA and other NARNIA-composite marks. The complainant was unhappy with Mr. Saville-Smith's decision to register NARNIA.MOBI and commenced proceedings pursuant to the Uniform Dispute Resolution Policy (UDRP) at the World Intellectual Property Office (WIPO) Arbitration and Mediation Center.

In order to succeed in a complaint under the UDRP, a complainant must prove three things:

  1. the domain name registered by the respondent is identical or confusingly similar to a trade-mark or service mark in which the complainant has rights;
  2. the respondent has no rights or legitimate interests with respect to the domain name; and
  3. the domain name has been registered and is being used in bad faith.

After hearing the complaint, WIPO ordered the transfer of the domain name to the complainant, finding that the complainant had established all three elements.

Shortly after the verdict, the respondent's family took to the press crying foul and wondering who would try to take away a child's birthday gift. Mr. Saville-Smith's wife declared that she was "shocked by the decision."

PR aside, there is nothing shocking about the decision. The decision itself is consistent with the approach favouring trade-mark owners that WIPO has historically taken to domain name registrations involving famous names.

The story is also more complex than the Saville-Smiths initially led WIPO to believe. Upon further inspection, the complainant had found that the respondent was actually the owner of a dozen or so other domain names at the same time he registered "the future present for his child." The complainant then filed supplementary submissions with WIPO showing that all but one of the domain names were directed to Sedo parking pages, and five also implicated third-party trade-mark rights.

No stranger to domain name registrations, as the respondent himself admitted, the respondent's trade-mark portfolio also included DRWHO.MOBI, MI5.MOBI and OVALOFFICE.MOBI, among other domains. The respondent did not make any claim that these were also gifts. To top it off, two weeks after the complaint had been filed, the respondent registered two further domains — FREENARNIA.COM and FREENARNIA.MOBI — a fact that was duly noted by the complainant.

The respondent argued that his domain name portfolio merely reflected his line of business, noting that in connection with the operation of his PR agency, he has had to register numerous domain names on behalf of clients and for the purposes of the agency, including defensive registrations. He also noted that he had registered a number of generic domain names, which he claimed never to have used for any particular purpose. Further, he put forward evidence that he had never been party to a proceeding under the UDRP, and so should not be considered a cybersquatter.

The respondent also argued that he was not profiting from the parked page use of the domain name, and claimed to receive no revenue from Sedo for advertising revenue generated by it. He claimed his only motive for registering the domain was for the non-commercial purpose of providing his son with a cool e-mail address. Thus, while he knew "Narnia" was a famous name and associated with C.S. Lewis's The Chronicles of Narnia series, he did have a right and legitimate interest in the name. Moreover, because he had only registered the domain name as a gift for his son, there could be no evidence of bad faith.

WIPO's sole panellist disagreed. The panel found the complainant had rights in the trade-mark NARNIA, and the disputed domain name was identical to the complainant's mark. The panel also found that the respondent lacked any legitimate interest in the domain name, in part because the respondent was not actively using the domain name for any legitimate non-commercial use or for fair use criticism.

The panel also distinguished the respondent's use from other UDRP decisions that had found the use of a domain name for e-mail purposes could be legitimate. In those cases, the panel found, the domain name was intended for persons known by that name, whereas in this case, the domain name was chosen because of its association with the Narnia books and movies.

With respect to the element of bad faith, the panel found that the respondent's admission that he knew of the complainant's NARNIA mark suggested "opportunistic bad faith." Equally disturbing to the panel was the respondent's decision to register the FREENARNIA.COM and FREENARNIA.MOBI domain names subsequent to the filing of the complaint. Moreover, while the domain name was not being actively used, the panel determined that the "passive holding of a domain name can also 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."

McCarthy Tétrault Notes:

Registering a domain name that you know is famous, for the sole reason of giving the domain name as a gift to a child, will not be considered legitimate use. However, a legitimate use may exist if the domain name is being used in association with active non-commercial fan or criticism websites. Finally, if you are the respondent, do not register further domains containing the mark that is subject of a challenge after a complaint has been filed. What better way to convince a panel of bad faith?

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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