The panel in CS Lewis (PTE) Ltd v Richard Saville-Smith  WIPO D2008-0821 was not convinced that the Respondent had registered the domain name narnia.mobi for use only as a Narnia-related email address for his son, apparently a big Narnia fan. Whilst such use could not of itself constitute a legitimate interest for the purposes of the Uniform Dispute Resolution Policy (UDRP), the panel also found “opportunistic” bad faith on the basis that Mr Saville -Smith used the domain name to mislead users to an advertising site while being aware of the fame and distinctiveness of the term “Narnia”. Essentially, the Respondent failed to show that he had any legitimate interest in a term that was widely known and that he had not generated revenue from the advertisements.
The Complainants own the trade mark, copyright and other proprietary rights in the works of CS Lewis, the author of the famous series of children books entitled The Chronicles of Narnia. The popularity of the books has increased recently as a result of their adaptation for the two blockbuster films The Chronicles of Narnia: The Lion, The Witch and the Wardrobe and The Chronicles of Narnia: Prince Caspian. The Complainants hold trade mark registrations in many jurisdictions for the mark NARNIA which is the name of the fictional country in which the stories take place.
The Respondent, together with his wife, run the Saville- Ferguson media and PR agency in Scotland. Mr Saville -Smith registered the disputed domain name, narnia.mobi, on 29 September 2006, only four days after the expiry of the three month sunrise period ICANN gave to trade mark owners to obtain .mobi domain names relating to their goods and services. The .mobi domain name was created by ICANN in 2006 as a top level domain for mobile devices.
Between 28 and 30 September 2006, the Respondent registered 12 more domain names including, for example, drwho.mobi and middleearth.mobi. All but one of these resolved to websites provided by Sedo, which parked unused domain names for free and returned revenues from pay-by-click advertising.
Narnia.mobi resolved to a parked webpage provided by Sedo containing sponsored links to commercial websites, including links to websites offering for sale merchandise and clothing related to the Narnia books and movies. Following the filing of the complaint, the Respondent made another error by registering freenarnia.com and freenarnia.mobi (reportedly as part of an aborted attempt to begin an online petition drawing attention to his case).
ARGUMENTS OF THE PARTIES
The Complainants claimed that the Respondent lacked any legitimate interest in the domain name and that the unauthorised use of “narnia” constituted bad faith. In particular they claimed that the Respondent relied on initial interest confusion to divert internet users to his website in order to generate pay-per-click advertising profit. They pointed to the fact that under Sedo’s domain parking policy, domain name registrants could park idle domain names at pay-per-click parked websites to generate advertising revenue and that that was precisely what the Respondent had done with narnia.mobi.
Mr Saville -Smith denied that he used the domain name to earn money. He denied any connection with Sedo’s advertising policy and contended that he had never profited from the agreement. He provided as evidence an email by the registration provider that the redirection of the disputed domain name to the Sedo holding page was not the result of his request and he had not sought to benefit financially. He also claimed that he had established a legitimate interest in the domain name because the sole reason for registering it was to give his 11 year old son a Narnia related email address as a birthday gift. He excused himself for not revealing the present until his son’s May 2008 birthday, on the basis that that date corresponded to the UK release of the second Narnia film. For similar reasons, he denied bad faith and claimed that he passively held thedomain name and had no intention to use or sell it. Finally, he asserted that he had no history of cybersquatting and that he had only registered generic domain names that had never been used on behalf of clients or for the purposes of his agency.
THE PANEL’S DECISION
On the basis that the Complainants had made out a prima facie case, the burden of proving rights or legitimate interests in the disputed domain name shifted to the Respondent. The panel was unconvinced by the Respondent’s story that he had registered the domain name so as to acquire an email address for his son. The use of a domain name as an email address may be sufficient to confer rights under paragraph 4(c) of the Policy only in cases where the domain name was intended for persons known by that name. In this case, the registration of the domain name only appropriated a distinctive and well known trade mark. Nor was the Respondent “making a legitimate noncommercial or fair use of the domain name”, i.e., the domain name did not resolve to an active non-commercial criticism or fan site.
The panel was also satisfied that the domain name had been registered and used in bad faith. First, it found that despite knowing the existence of the famous NARNIA mark and having no connection to the Complainants, the Respondent proceeded to register the disputed domain name. According to the panel, “when a domain name is so obviously connected with a complainant and its products or services, its very use by a registrant with no connection to the complainant suggests opportunistic bad faith”. Secondly, it was the responsibility of the Applicant to determine whether his domain name registration infringes or violates someone else’s rights. “Equally disturbing” to the panel was the fact that the Respondent had registered two more domain names, freenarnia.com and freenarnia.mobi, soon after the filing of the complaint.
There was no indication that the Respondent had used or made any preparations to use the domain name as an email address in the 20 months following registration. Further, it was clear from email correspondence between the parties that he knew that the domain name was parked with Sedo. In addition, in the same period the Respondent had registered a dozen other domain names, all but one of which was redirected to Sedo parking pages. Five of these domain names implicated third party trade mark rights. Moreover, the Respondent, because of his profession was clearly “not a novice in the area of domain name registration”.
The case generated significant media interest, with the couple adopting quite convincingly the position of innocent victims cowed by over zealous corporate rights holders. Fiona Saville- Smith claimed that “we didn’t sell, we didn’t try to make any money, we didn’t pass ourselves off as anything to do with Narnia”. The press, of course, lapped it up and probably didn’t care that the spin they’d given the story was simply maintained by a finding of a UDRP panel, apparently as unsympathetic to the plight of the little person as the corporate machine that pursued him. In the real world, however, the fact is that Mr Saville-Smith did not present adequate evidence upon which to base any legitimate interests or rights. More to the point, he couldn’t because his name wasn’t Narnia. Previous UDRP decisions have shown that use as email address creates a legitimate interest only when the person is known by that name. Further, there was clear evidence of bad faith. Whilst the case did not involve typical cybersquatting behaviour, the panel took a dim view of the fact that, apart from narnia.mobi the couple had also registered a significant number of other non generic domain names. Their profession as media and PR agents was another aggravating circumstance. Perhaps their most obvious failing, however, was not having the prescience to name their son… Narnia.