Narnia.mobi: The Last Battle?
Pull up a silver chair, take a handful of turkish delight, and let us tell you a story. We have referred in earlier posts (here and here) to the chronicles of Narnia.mobi, the domain name registered by Mr Saville-Smith and Gillian Ferguson nearly two years before it was to be given as a birthday present to their son.
The weekend before the decision from ICANN Ms Ferguson wrote in Scotland on Sunday "Lions versus Lawyers" which explained some of the background to the case and that a number of domain names were purchased by her husband and herself for e-mail addresses. She wrote
"Baker & McKenzie [lawyers for the estate of C.S. Lewis] presents as its only "evidence" a holding page created for any unused domain name – without our knowledge; claiming we had some revenue-sharing arrangement. Sheer fantasy fiction (maybe that's why they represent the CS Lewis Company), as easily proved. We didn't even know such holding pages, not registered with any search engine, existed, but some found this the footprint of a dastardly plot."
"Victory should be certain; we've done nothing wrong or illegal. Though a late "Supplemental Filing" by feverish Baker & McKenzie now wildly attempts to cast us as shady domain speculators, despite the fact we have never sold one. Seemingly based on our numerous domains registered, such as for our start-up internet poetry business, supported by Scottish Enterprise, my online poetry project, and a new children's charity.
"Will justice win out against wealth and power?"
Well, ICANN pronounced.
It was noted that,
"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."
And the Lewis estate argued that this parking with Sedo could generate advertising revenue through pay-per-click advertising, a claim disputed by Mr Saville-Smith (supported by an e-mail from Fasthosts Internet Ltd). Oh, and after the dispute arose:
"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>."
Referring to previous decisions the panel found in favour of the Lewis estate and said,
"For the reasons discussed under the preceding heading of this decision, 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.
"In addition, while the Respondent denies that he registered the disputed domain name with the aim of profiting from and exploiting the Complainant’s mark, there are circumstances in the record that call into question the Respondent’s motivation in registering the domain name. The Respondent registered the disputed domain name on September 29, 2006. There is no indication in the record that the Respondent had used or made any preparations to use the disputed domain name as an email address before being placed on notice of this dispute by the Complainant some twenty (20) months later in May 2008. The Respondent’s email communications with the Complainant on May 5, 2008, clearly reveal that he knew the disputed domain name had been parked by Sedo. Further, at or near the time of the registration of the disputed domain name, the Respondent registered a dozen other domain names, all but one of which were redirected to Sedo parking pages. Five of these additional domain names, like the disputed domain name, implicate third-party trademark rights. All of the Sedo parking pages generate pay-per-click advertising revenue, even if the Respondent asserts not to receive such benefit himself. The Respondent as acknowledged by the Respondent himself is not a novice in the area of domain name registration. Finally, as noted above, since the filing of the Complaint the Respondent has registered two additional domain names appropriating the Complainant’s NARNIA mark.
"In view of all of the foregoing, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy."
At the end of this last battle – the Lewis estate stands triumphant.