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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions