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Thursday, 24 July 2008

Narnia domain name dispute concludes

The IPKat previously reported (here) the plight of a Scottish couple who had registered the domain name narnia.mobi, claiming that they had done this as a birthday present for their son. The proprietors of the various copyright works of the late CS Lewis, and the associated trade marks, were not impressed by this and began proceedings at the WIPO-run domain name dispute resolution service (link). The decision has now issued, and is available here.

The facts of the case, as summarised in the decision, immediately lead one to suspect that the motives of the respondents were not quite as they had alleged:

"The Complainant owns trademark, copyright and other proprietary rights in the literary works of C.S. Lewis. This includes valid and subsisting trademark registrations in various countries for the term “narnia” and other NARNIA-composite marks. “Narnia” is the name of a fictional country in C.S. Lewis’ “The Chronicles of Narnia”, a series of seven children’s books. The first book in this series was published in 1950, and the works since have been adapted for film at least twice - in the film “The Chronicles of Narnia: The Lion, The Witch and The Wardrobe,” and more recently in the film “The Chronicles of Narnia: Prince Caspian”. The Complainant also owns and operates web sites at narnia.com and narnia.co.uk, which provide information about the “The Chronicles of Narnia” books and the movies, their history and characters.

The Respondent, together with his wife, runs the Saville-Ferguson media and PR agency. The Respondent registered the disputed domain name narnia.mobi on September 29, 2006, shortly after the dotMobi sunrise period for trademark owners had closed. The disputed domain name resolves to a parked web page provided by Sedo, 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.

Between September 28 and 30, 2006, the Respondent also registered the following domain names: 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. With the exception of middleearth.mobi, all of these domain names resolve to parked websites provided by Sedo.1

On June 17, 2008, two weeks after the filing of the instant Complaint with the Center, the Respondent registered the domain names freenarnia.com and freenarnia.mobi."
After hearing arguments from both sides, the panel was unconvinced by the respondent's claims that they had acted in good faith, and concluded as follows:
"The Panel cannot envision any plausible, good faith basis upon which the Respondent could have concluded that he was free to appropriate the Complainant’s distinctive and widely known NARNIA mark for use as a personal email address. The Respondent was well aware of the Complainant and the Complainant’s mark, and the Respondent clearly had notice that the Policy was applicable to domain name registrations in the dotMobi registry. Equally disturbing to the Panel at this point is the Respondent’s registration of the freenarnia.com and freenarnia.mobi domain names subsequent to the filing of the Complaint in this matter, and the implications these registrations hold both in terms of the good faith requirement implicit in paragraph 2 of the Policy and, ultimately, the Respondent’s motivation in registering not one but three domain names appropriating the Complainant’s mark."
Unsurprisingly, the panel ordered that the domain name narnia.mobi be transferred to the complainant.

The IPKat is not at all surprised by the decision, but is a little dismayed (and, perhaps naively, shocked) by the apparently blatant manipulation by the respondents of their story when it first appeared in the media a few weeks ago. It seems to the IPKat that they knew exactly what they were doing, and their actual motives had very little to do with simply getting a nice birthday present for their son. Instead, their acts of registering so many domain names now makes them appear like classic cybersquatters, but perhaps with a particular talent for tales of fantasy.

6 comments:

Anonymous said...

It is not really that shocking. Even a cybersquatter with no case whatsoever will often decide that there is a nuisance value in persisting with unsupportable defences and assertions to the Press. I suspect that they hold out on the basis that “perhaps they will offer me £5,000 to go away” rather than waste the time, effort, cost a risk (no matter how small) of any action and bad publicity. I have to say that I am regularly routinely impressed by clients who refuse to give in. It lessens the risk of this strategy being pursued in the future.

Anonymous said...

The spin this couple have put on this story is quite amazing, take a look at

http://news.bbc.co.uk/1/hi/scotland/edinburgh_and_east/7522240.stm

None of the facts are discussed, it's just a chance for the respondant to rant a bit more. Some would say that this was hardly a balanced piece of journalism....

David said...

Agreed, but it's not quite as unbalanced as this story.

David said...

Sorry, I actually meant this one.

Frédéric said...

Come on, kids just love to get domain names as birthday presents. Don't they ?

BV said...

I let the BBC know about the apparent one-sidedness of their original article (with reference to IPKat) - and they have now added a few paragraphs from the judgement which balances it out a bit!

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