In the latest move by the World Intellectual Property Organization (WIPO), RedBull.mobi was ordered transfered from a private citizen to the Poland-based energy drink company.
According to the complaint, the registrant of the name signed a registration agreement in the Hebrew language, and stated in his response that he is commonly known by the Hebrew name “Shor Adom.” According to WIPO, “Use of a number of dictionaries shows that Shor Adom can be translated into the English words ‘red bull’ or ‘red ox’.”
Since the domain name did not have a website on it at the time of the WIPO complaint, it was difficult for the respondent to prove he acted in good faith. The strength of the Red Bull trademark is supported by over 140 trademarks and 200 related domain names.
The redbull.mobi WIPO complaint is Case No. D2008-1611.
Yale University has filed an arbitration case with the World Intellectual Property Organization (WIPO) seeking to obtain yale.mobi. Currently, that domain name is registered at GoDaddy with the message: “This .MOBI domain is parked free, courtesy of GoDaddy.” It is not registered with an obvious trademark holder, such as the lock or forklift manufacturer, so we’ll be watching to find out how the case eventually resolves. Perhaps this world-class university is interested in developing a mobile version of their website.
The increasing number of WIPO cases with .mobi domain names and the legal fees incurred in the process are a wake up call to companies who have not yet secured their own .mobi domain names. Since widespread acceptance of the mobile web is in the early stages, now is a good time to start thinking about protecting company trademarks.
The yale.mobi WIPO case number is D2008-1568.
Just in case anyone still thinks you can do whatever you want when registering a domain name, the latest World Intellectual Property Organization (WIPO) decision is a textbook example of why restraint is a virtue when you have your registrar shopping cart open.
When Richard Saville-Smith decided to purchase Narnia.mobi for his eleven year old son for a birthday gift, he was taking an enormous risk. Narnia, the fictitious land in C.S. Lewis’ book series beginning with The Lion, The Witch and The Wardrobe, was recently made famous again in the Disney movie The Chronicles of Narnia. Hint: If you see the word “Disney” in the vicinity of any possible domain registration, it might be a good idea to take a pass on the name if it is a trademark.
According to the WIPO documentation, Saville-Smith stated his intention was to give the domain name to his son so that he could have a narnia.mobi email address, and felt he was free to do so because he believed the trademark had expired. Unfortunately for Saville-Smith and his son, he didn’t set up the email addresses and instead parked the names on Sedo.com (computer link). While the page was parked on Sedo, it displayed advertisements for Narnia related products, so Saville-
Smith gets paid whenever anyone clicks on the advertisments. At the time of this blog post the site is still parked.
Why is this a problem? Well, when a page is parked and generating revenue, it can no longer be considered a fan site. Even if the page earned one penny, or attempted to earn revenue, it may be considered a “bad faith” registration, and that is exactly how the panel at WIPO saw it.
Perhaps Saville-Smith was emboldened to register this domain name because it is a .mobi. After all, the market value of aftermarket .mobi domain names is a hotly disputed topic. Perhaps this would not have been treated as a big deal by another author’s estate, but Disney is another story — they have been steadily building a presence in the .mobi namespace for several years. Disney.mobi, CampRock.mobi, and HSM2.mobi, especially when there is no HSM2.com are all examples of how the Disney company takes their .mobi positioning very seriously. I wouldn’t doubt it if we see Narnia.mobi developed in the near future with the release of their next movie, Prince Caspian, as well as an upcoming third Narnia film slated for 2010.
Certainly I feel badly for the eleven year old boy. In order to avoid this type of disappointing scenario in the future, if you are considering registering a domain name for someone else, the best plan of action is to ensure it is not protected by a trademark.
