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.