The Complainant is C.S. Lewis (PTE.) Ltd., of Beach Centre, Singapore, represented by Baker & McKenzie LLP, United States of America.
The Respondent is Richard Saville-Smith, of Edinburgh, United Kingdom of Great Britain and Northern Ireland, represented by Matheson Ormsby Prentice, Ireland.
2. The Domain Name and Registrar
The disputed domain name <narnia.mobi> is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 28, 2008. On May 28, 2008, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the domain name at issue. On May 28, 2008 Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 3, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 23, 2008. The Response was filed with the Center on June 23, 2008.
The Center appointed William R. Towns as the sole panelist in this matter on June 30, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On July 3, 2008, the Complainant submitted an unsolicited Supplemental Filing (“Complainant’s Supplemental Filing in Response to Respondent’s Response”). The Respondent requested an opportunity to prepare and submit a response in relation to the matters raised in the Complainant’s Supplemental Filing. The Panel issued a Procedural Order on July 7, 2008, allowing the Respondent until July 14, 2008 to submit a supplemental filing. The Respondent submitted its Response to the Complainant’s Supplemental Filing on July 11, 2008.
In its Procedural Order of July 7, 2008, the Panel expressly reserved its determination whether to admit or consider the Parties’ supplemental submissions for any purpose relative to the Panel’s decision in this case. The time for the Panel to forward its decision to the Center under paragraph 15(b) of the Rules was extended to July 21, 2008.
4. Factual Background
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>.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the NARNIA marks have become famous throughout the world as a result of the Complainant’s longstanding and prominent use of its trademarks in connection with the “The Chronicles of Narnia” series of books, the blockbuster film “The Chronicles of Narnia: The Lion, The Witch and The Wardrobe,” the recently released film “The Chronicles of Narnia: Prince Caspian,” and the related advertising and promotional campaigns for the foregoing. According to the Complainant, the NARNIA marks have also been widely used on and in connection with various types of merchandise relating to the items, characters and places featured in “The Chronicles of Narnia” works.
The Complainant asserts that the disputed domain name <narnia.mobi> is confusingly similar to the Complainant’s NARNIA mark. According to the Complainant, no relationship exists between the Respondent and the Complainant, and the Respondent is neither licensed nor otherwise authorized to use the Complainant’s NARNIA mark. The Complainant maintains that the registration of a domain name incorporating another’s famous mark does not confer any rights or legitimate interests in the domain name to the Respondent, but to the contrary constitutes bad faith under paragraph 4(c) of the Policy. Further, the Complainant notes that under Sedo’s Domain Parking policy, domain name registrants may park idle domain names at pay-per-click parked websites to generate advertising revenue.2 In this instance, according to the Complainant, the Respondent has done so, and is using the disputed domain name in bad faith, relying on initial interest confusion to divert Internet users to the Respondent’s website in order to generate pay-per-click advertising revenue.
B. Respondent
The Respondent concedes that the key element of the disputed domain name <narnia.mobi> is identical to the Complainant’s NARNIA trademark registrations for purposes of paragraph 4(a)(i) of the Policy. The Respondent maintains, however, that the Complainant has failed to meet its burden under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy to prove that the Respondent lacks rights or legitimate interests in the domain name and that the domain name was registered and is being used in bad faith.
The Respondent asserts that the sole reason for registering the disputed domain name was to provide his son with an email address containing “Narnia” as a gift. According to the Respondent, his son is an enthusiastic fan of “The Chronicles of Narnia” books. The Respondent registered the disputed domain name shortly after the release of the first “Narnia” movie, at which time his son was nine years old. The Respondent alleges he decided to present his son with this gift on the event of his eleventh birthday on May 20, 2008, corresponding to the release of the second “Narnia” film in the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
The Respondent disclaims any commercial motive for registering the disputed domain name. According to the Respondent, he does not have anything to do with Sedo’s use of the disputed domain name with the pay-per-click parking page and has never profited from this arrangement. The Respondent has provided an email from Fasthosts Internet Ltd. supporting his claim that these arrangements with Sedo were made by Fasthosts without his knowledge, consent or involvement.3
According to the Respondent, his registration of the disputed domain name with the sole intent of using the domain name for a child’s e-mail address and with no commercial motivation establishes rights or legitimate interests under the Policy.4 The Respondent asserts that paragraph 4(c)(iii) of the Policy seeks to establish a balance between the rights of trademark owners and legitimate, non-commercial use and the protection of free speech. While acknowledging that this case presents “a new set of circumstances in relation to the categories of cases typically considered by Panels” under paragraph 4(c)(iii), the Respondent argues that the balancing test should be applied in favor of the Respondent.
The Respondent further argues that no bad faith can be found because the Respondent did not register the disputed domain name for commercial gain and has no intention of using the domain name in such a manner. The Respondent maintains he was passively holding the domain name, with the intent to gift his son with a “narnia.mobi” email address on the child’s eleventh birthday. According to the Respondent, there simply is no evidence that he registered the domain name for any bad faith use: he is not using the domain name to attract Internet users to a website by creating a likelihood of confusion with the Complainant’s mark, he has never held the domain name out for sale.
The Respondent asserts that he has no history of cybersquatting and has never been a party in a proceeding under the Policy. In that regard, the Respondent states that in connection with the operation of the Saville-Ferguson agency he has had cause to register numerous domain names on behalf of clients and for purposes of the agency, including defensive registrations. He further notes that he has registered a number of generic domain names, which he maintains do not implicate third-party trademark rights, and which he asserts have never been used for any purpose. According to the Respondent, none of these registrations in any way impugn the Respondent’s bona fides or suggest any history of cybersquatting or bad faith registrations.
6. The Parties’ Supplemental Submissions
No provision in the Policy, the Rules or the Supplemental Rules authorizes supplemental filings by either a complainant or a respondent without leave from the Panel. Paragraph 12 of the Rules provides that the Panel may request, in its sole discretion, further statements or documents from either of the parties. The Panel notes that the Rules and relevant panel decisions demonstrate a decided preference for single submissions by the parties absent exceptional circumstances. See Rollerblade, Inc. v. CBNO and Ray Redican Jr.,
WIPO Case No. D2000-0427. Panels have accepted unsolicited supplemental submissions in limited circumstances, when offered to present new, pertinent evidence not reasonably available until after the party’s initial submission, Top Driver, Inc., v. Benefits Benefits,
WIPO Case No. D2002-0972; to bring new and highly relevant legal authority not previously available to the attention of the panel, Pet Warehouse v. Pets.Com, Inc.,
WIPO Case No. D2000-0105; or to rebut arguments of the opposing party that could not reasonably have been anticipated, Radan Corp. v. Rapazzini Winery,
WIPO Case No. D2003-0353. Conversely, a mere longing to reargue the same issues already submitted is not a valid reason for additional submissions. World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,
WIPO Case No. D2000-1306.
After reviewing the Complainant’s Supplemental Filing, the Panel finds that the Complainant reasonably could not have anticipated that the Respondent’s would argue that his prior domain name registrations rebut a claim of cybersquatting. The Panel considers it to be the Respondent who put this matter in issue, and the Complainant has documented in its Supplemental Filing the Respondent’s registration of some twelve additional .mobi domain names at or near the time of the registration of the disputed domain name. All but one of these additional domain names are being used with Sedo parking sites containing advertising links. Although the Respondent claims that he registered only “generic” domain names, five of these domain names appear to implicate third-party trademark rights.5
The Panel also concludes that the Respondent’s registration following the filing of the Complaint of two further domain names reflecting the Complainant’s NARNIA mark, <freenarnia.com> and <freenarnia.mobi>, is sufficiently pertinent that such information should be made a part of the record, given the Respondent’s position that previously he has registered only generic domain names that do not involve third-party trademark rights. As noted above, the Panel afforded the Respondent an equal opportunity to reply to Complainant’s Supplemental Filing.
Accordingly, the Panel has allowed for purposes of the administrative record those portions of the Complainant’s Supplemental Filing and the Respondent’s Supplemental Filing addressing these subjects.
7. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,
WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,
WIPO Case No. D2000-0187. See, Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer are the sole remedies provided to a complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus the consensus view is that paragraph 4(c) of the Policy shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,
WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Respondent does not challenge the Complainant’s rights in the NARNIA mark, and the uncontested evidence in the record clearly demonstrates that the Complainant has established rights in the NARNIA mark through registration and long use. The Complainant’s mark is distinctive and the mark has acquired significant public recognition. The Panel further concludes that the disputed domain name <narnia.mobi> is identical and confusingly similar to the Complainant’s mark. See, e.g., Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525 (question of identity or confusing similarity is evaluated based on a comparison of the complainant’s mark and the alphanumeric string constituting the domain name at issue). The Respondent has conceded that the disputed domain name is identical to the Complainant’s NARNIA mark.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden to the Respondent to come forward with evidence of rights or legitimate interests in the disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. It is uncontested that the Respondent has not been authorized to use the Complainant’s mark or to appropriate the mark for use with domain names. The disputed domain name is identical to the Complainant’s mark, and it is uncontested that the Respondent was aware of the Complainant and the Complainant’s mark. Further, the Complainant has adduced evidence which, if not rebutted, tends to show that the disputed domain name is being used by the Respondent to divert Internet users to a pay-per-click parking website in order to generate advertising revenue.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to him of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial 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.
The Respondent argues that he has established rights or legitimate interests in the disputed domain name under paragraph 4(c)(iii) of the Policy based on his registration of the domain name for prospective use as a personal email address. The Respondent registered the domain name with full knowledge of the Complainant and the Complainant’s mark, and as the Respondent concedes, the disputed domain name is identical to the Complainant’s mark.
The Respondent has brought to the Panel’s attention no prior panel decisions that support the proposition that a respondent may establish rights or legitimate interests in a domain name that appropriates another’s distinctive and widely known trademark by registering the domain name for prospective use as a personal email address, or by the actual use of the domain name for this purpose. This Panel to the contrary has held that no rights or legitimate interests are established under paragraph 4(c) of the Policy by a respondent’s deliberate registration of a domain name appropriating the complainant’s mark for use as an email address. Hill & Knowlton, Inc. v. Dexter Smith,
WIPO Case No. D2007-1478. While several panel decisions acknowledge that the use of a domain name as an email address may be sufficient to create rights under paragraph 4(c) of the Policy, these cases are distinguished from the present situation by the salient fact that normally the domain name was intended for persons known by that name. See, e.g., Wilserv Corporation v. Willi Kusche,
WIPO Case No. D2007-0004; Nishan Systems, Inc. v. Nishan Ltd.,
WIPO Case No. D2003-0204.
The Respondent also predicates his claim of legitimate interests on a comparison to “categories of cases typically considered by Panels” under paragraph 4(c)(iii) of the Policy – i.e, criticism sites and fan sites. The Panel does not find such a comparison availing. The language of paragraph 4(c)(iii) of the Policy is couched in the present tense and unambiguously requires a respondent to be “making a legitimate noncommercial or fair use of the domain name.” Paragraph 4(c)(iii) of the Policy only concerns active websites that practice genuine, noncommercial criticism,6 and only deals with fan sites that are clearly active and noncommercial.7 Thus, the Respondent cannot establish rights or legitimate interests in the disputed domain name under paragraph 4(c)(iii) without actively making a legitimate noncommercial or fair use of the disputed domain name, or at the very least providing evidence of demonstrable preparations to make such use prior to notice of the dispute. Inconsistent with his asserted motive, the Respondent has done neither in this case. Moreover, even where the Respondent is actively using the disputed domain name as an email address, such use cannot support his assertion of rights or legitimate interests in the disputed domain name for the reasons already discussed above.
For all of the foregoing reasons, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain name. Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration and use of domain names for the benefit of legitimate trademark owners. See Match.com, LP v. Bill Zag and NWLAWS.ORG,
WIPO Case No. D2004-0230.
The Respondent has no connection with the Complainant, but nonetheless registered the <narnia.mobi> domain name, deliberately appropriating the Complainant’s distinctive and widely known NARNIA mark. 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”. Research In Motion Limited v. Dustin Picov,
WIPO Case No. D2001-0492. See also Paula Ka v. Paula Korenek,
WIPO Case No. D2003-0453.
Paragraph 2 of the Policy implicitly requires some good faith effort to avoid registering and using domain names corresponding to trademarks in violation of the Policy. Media General Communications, Inc., supra. See Shaw Industries Group Inc. and Columbia Insurance Company v. Rugs of the World Inc.,
WIPO Case No. D2007-1856; HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager,
WIPO Case No. D2007-0062. Paragraph 2 of the Policy (“Your Representations”) is incorporated by reference in the registration agreements of ICANN-approved registrars, and provides as follows:
“By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights. (emphasis added)”.
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.
While the Respondent denies making any active use of the disputed domain name, the passive holding of a domain name can be considered as bad faith where it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name that would be legitimate. Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003. See also Salomon Smith Barney, Inc. v. Salomon Internet Services,
WIPO Case No. D2000-0668. For the reasons discussed above, this Panel cannot, in the circumstances of this case, find the Respondent’s intended use as asserted to be legitimate.
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.
8. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <narnia.mobi> be transferred to the Complainant.
William R. Towns Sole Panelist
Dated: July 21, 2008
1 Complainant’s Supplemental Filing, Annex 2 (WhoIs records and printouts of web pages).
3 Response, Annex 2. Fasthosts Internet Ltd. is identified in the WhoIs record as the Registration Service Provider. The email, dated June 23, 2008, appears to have been sent by an employee in Fasthosts’ Customer Support department. The email avers that the redirection of the disputed domain name to the Sedo holding page was not the result of a request by the Respondent, and that the Respondent “has not sought to benefit and has not benefited financially in any way whatsoever from the domain name through this redirection.”
4 The Panel notes that in an email exchange with the Complainant’s legal representative on May 5, 2008, the Respondent stated that he “bought the name for my ten year old son as a special present, to be given when the next film comes out.” The Respondent also stated that the domain name was “currently parked with a domain site.” Response, Annex 1.
5 The domain names in question have been identified in the Factual Background section of this Decision. According to the Complainant, DOCTOR WHO, MI5, MIDDLE-EARTH, SPOOKS, and TARDIS are all registered trademarks.
