June 2008 was a busy month in Narnia. Not only did it see the release of Prince Caspian, the film of the second book in the Chronicles of Narnia series, but also the deadline for an 11-year-old boy to respond to the World Intellectual Property Organisation (WIPO) in Geneva on a 128-page complaint submitted by CS Lewis Ltd, the company which now owns the rights to the author's work.
Devoted Narnia fan, Comrie Saville-Smith was given the domain name "narnia.mobi" as an 11th birthday present from his parents. Proceedings have now been brought against his father, Richard, alleging that the domain name was purchased in bad faith with the intention of making financial gain from the Narnia name.
The WIPO Arbitration and Mediation Centre is the pre-eminent forum for the resolution of domain name disputes relating to top level generic international domains such as .com, .net and .mobi. Such disputes mostly arise from a growing practice known as cyber-squatting, where a third party registers a pre-existing trade mark as a domain name and either seeks to sell the domain name to the trade mark owner for an inflated price or keeps the domain name and relies upon the reputation of the trade mark to attract business to its own site.
To establish cyber-squatting under the Uniform Domain Name Dispute Resolution Policy (the policy used by WIPO to determine domain name disputes), a trade mark owner must prove three things:
- the way in which the domain name is identical or similar to its trade mark;
- that the domain name holder does not have any legitimate interest in the domain name; and
- that the domain name was registered in bad faith.
It seems that it is the third element, the presence of bad faith, which will prove most difficult for CS Lewis Ltd to establish. Edinburgh-based Saville-Smith strongly denies that there was any financial motivation behind the purchase, which is one of the most important factors for evidencing bad faith registrations.
In the UK courts, cyber-squatting is often dealt with under the law of passing off, which has tended to protect the rights of the trade mark owner. The key precedent in this field is a 1999 case, British Telecommunications plc v One in a Million Limited, in which a number of large companies, including BT and Marks and Spencer, successfully sued domain name dealer, One in a Million Ltd, for passing off after it had purchased a large number of domain names containing the companies' names.
In that case, the Court of Appeal held that an intention to appropriate another's goodwill, i.e. passing off, could be inferred even if there is a possibility that no such appropriation would take place. It was unlikely that One in a Million ever intended to trade under the domain name and pass its goods or services off as those of any of the companies involved. This may not bode well for the Saville-Smiths should WIPO decide in their favour and CS Lewis then seek to pursue its claim in the British courts. In their favour, however, would be the distinguishing factor that in the One in a Million case, the domain name holder intended to sell the registrations to the trade mark owners for a profit. The Saville-Smith family, on the other hand, claim that it has refused to sell the domain name to CS Lewis despite being asked to name its price.
In the meantime, the narnia.mobi domain name has been frozen by WIPO pending the outcome of the proceedings, which is expected to be announced within a month of the response deadline, 23 June.