[Commons-Law] The narnia.mobi dispute, or "English 101 for WIPO's arbitration panel"

[Pranesh Prakash]

Dear All,
As per ICANN's Uniform Domain Name Dispute Resolution Policy (UDRP), three
elements have to be proven: (i) your domain name is identical or confusingly
similar to a trademark or service mark in which the complainant has rights;
*and* (ii) you have no rights or legitimate interests in respect of the
domain name; *and* *(iii) your domain name has been registered and is being
used in bad faith.*

Please note that all three requirements need to be proven.  The three
requirements are connected by ands and not ors.  Yet, the third requirement,
that of bad faith, is barely ever proven.  In most cases, it is simply
presumed.  The burden (wrongly) shifts on to the person holding the domain
name to show that it has been registered and is being used in good faith
(whatever that may mean).  What is bad faith?  Well, the UDRP policy
provides some guidelines:

*4(b). Evidence of Registration and Use in Bad Faith.* For the purposes of
Paragraph 4(a)(iii), the following circumstances, in particular but without
limitation, if found by the Panel to be present, shall be evidence of the
registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired
the domain name primarily for the purpose of selling, renting, or otherwise
transferring the domain name registration to the complainant who is the
owner of the trademark or service mark or to a competitor of that
complainant, for valuable consideration in excess of your documented
out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of
the trademark or service mark from reflecting the mark in a corresponding
domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of
disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract,
for commercial gain, Internet users to your web site or other on-line
location, by creating a likelihood of confusion with the complainant's mark
as to the source, sponsorship, affiliation, or endorsement of your web site
or location or of a product or service on your web site or location.


Sure the wording makes it clear it is non-exhaustive, but surely they are to
be held as guiding lights?  And, even more surely, they have to be proven by
the party alleging bad faith?  WIPO thinks not.

The arbitration panel held:
"The language of . . . the Policy is couched in the present tense and
unambiguously requires a respondent to be 'making a legitimate
non-commercial or fair use of the domain name.'. . . The Policy only
concerns active websites that practice genuine, non-commercial criticism,
and only deals with fan sites that are clearly active and non-commercial."

This inverts the language of the UDRP, and shows their skewed reading of the
policy's language.  (I am being charitable by not saying "shows their
inability to read English".  "English, *&%$#^#@*(&.  Do you speak it?"
(without any xenophobic/classist overtones))  They are correct in noting
that the Policy is in the present tense.  Section 4(a) is worded such that
your site has to currently be doing some wrong.  Thus, to re-frame the
panel's sentence accurately:
"The Policy only concerns active websites that practice non-genuine,
commercial misappropriation, and does not deal with fan sites that are
inactive. (And in fact does not explicitly talk of fan sites at all.)"

This would have reflected the language of the UDRP.  Thus, this would mean
that the estate of C.S. Lewis could only file a case against the
Saville-Smiths when they contravened Section 4(a).  If this (the correct
test, I would argue) is applied, they wouldn't qualify until it can be
proven that "domain name has been registered and is being used in bad faith".
That cannot be proven when a) they don't misrepresent themselves to be
related to Narnia, aren't dealing in the same areas as the C.S. Lewis estate
(spin-offs, official merchandise, etc.); and b) when the domain name has not
"been registered in bad faith" and c) when the domain name is not "being
used in bad faith".  So, until the Saville-Smiths try to sell it, or it is
otherwise shown that they don't mean what they say (when they claim that it
is for their child's future use), it can't be claimed that the domain name
is "being used in bad faith".

And how, by what spandex-ian stretch of imagination, is the subsequent
registration of "freenarnia.mobi" suggestive of bad faith?  I'd like to
smoke what they're smoking.

The WIPO arbitration panel is not bound by the principle (or policy) of
stare decisis.  They don't have to blindly follow precedents.  They are,
however, bound by the text of the UDRP.  It is about time they realise that.


The UDRP policy: http://www.icann.org/udrp/udrp-policy-24oct99.htm

Regards,
Pranesh

---------

http://www.theregister.co.uk/2008/07/25/narnia_name/

*Dead author's estate snatches child's domain*
Nar-nar-nar-nar-nar(nia)
Published Friday 25th July 2008 07:02 GMT

A British couple has lost the battle to keep the narnia.mobi domain name
which they claimed was only registered so that their son could have a
Narnia-related email address. The address will transfer to a company
representing CS Lewis's estate.

Richard and Fiona Saville-Smith failed to convince an arbitration panel of
the World Intellectual Property Organisation (WIPO) that they registered and
used the domain name in good faith. Fiona Saville-Smith told OUT-LAW that
they will not appeal.

*Baaaaaaad faith*
"The ruling was absolutely unfair. Although I'm a lay person the rules seem
pretty simple, that they had to prove that we had a bad faith registration,"
she said. "Their grounds for that was that we used it to make money. We have
provided extremely clear evidence that that was not the case."

Saville-Smith, who also writes poetry under the name Gillian Ferguson, said
that she and her husband had found the whole experience "dispiriting" and
that they were extremely unlikely to appeal.

The WIPO arbitration process will only transfer a name if the person who
requests it has rights in the name, such as a trade mark, and the person
holding the name has none, and if the person holding the domain name has
registered or is using it in bad faith.

It was uncontested that the estate of Lewis had rights in the word Narnia.
The WIPO rules state that someone can have rights in a term if it is making
"a legitimate non-commercial or fair use of the domain name, without intent
for commercial gain to misleadingly divert consumers or to tarnish the
trademark or service mark at issue".

Saville-Smith argued that the planned use of the domain name as the basis
for an email address for her son was a legitimate non-commercial use, but
the WIPO ruling said that the only precedent for an email address counting
as fair use was when the person for whom the address was intended shared a
name with the domain name in contest.

Had Saville-Smith created a fan site or a criticism site related to CS
Lewis's works then that could well have been a legitimate use, but the WIPO
ruling said that such a site would have to exist just now rather than simply
be planned.

"The language of…the Policy is couched in the present tense and
unambiguously requires a respondent to be 'making a legitimate
non-commercial or fair use of the domain name.'," said the ruling. "The
Policy only concerns active websites that practice genuine, non-commercial
criticism, and only deals with fan sites that are clearly active and
non-commercial."

Saville-Smith said that on the question of the registration or use of the
domain name in bad faith she and her husband felt that the ruling was
unfair.

"As I understand it they had to prove that it is a bad faith registration
and as far as we are concerned there is no evidence that it was a bad faith
registration," she said. "We didn't sell it, we didn't try to make any
money, we didn't pass ourselves off as anything to do with Narnia."

The panel's justification for concluding that the registration was in bad
faith was that "as prior panels have observed, 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'," said the ruling.

The WIPO panel also said that the fact that two further Narnia-related
domain names were registered by the Saville-Smiths after the Lewis estate
complaint was suggestive of bad faith use.

Saville-Smith, though, told OUT-LAW that the registration of freenarnia.mobi
was part of an aborted attempt to begin an online petition drawing attention
to their case.

Copyright (c) 2008, OUT-LAW.com

OUT-LAW.COM is part of international law firm Pinsent Masons.
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