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The UDRP in Narnia

This is an updated and corrected version of an earlier post.

Richard Saville-Smith says that he bought the domain name for his 11 year old son as a birthday present, and now the C.S. Lewis estate, represented by Baker & McKenzie, filed a domain name arbitration to wrest control of the domain name away from him. (source)

The mainstream media is trying to paint this as a big mean company trying to steal an 11 year old kid’s cookies. More likely, it is a story of a big mean company trying to steal a small opportunist’s lemonade stand. Not that both aren’t a bit unseemly on the part of the big guy, but the emotional angle didn’t pull me in.

That isn’t to say that Mr. Saville-Smith isn’t in the right here. Nor is it to say he is. Initially, it appeared to be clear that he was just another cybersquatter. However, upon further research, I am going to reverse my position at least 120 degrees, consume some humble pie, and call this one a little closer than it originally appeared.

Under the domain name arbitration rules (the UDRP), the Lewis estate is going to need to show that it owns trademark rights to the name “Narnia,” and that Saville-Smith both registered and used it in bad faith.

With respect to trademark rights to “Narnia,” I presume that the Complainant will be able to show that rather easily. Book and movie titles are not necessarily ennobled with trademark rights, but when they are part of a series, they usually are. Nevertheless, Seville-Smith doesn’t seem to think that the Lewis company has been the best stewards of C.S.’ legacy. “[T]he Singapore registered CS Lewis company,” he wrote, “has fundamentally betrayed the intellectual and moral legacy of CS Lewis in its pursuit of profit.

Whether this is true or not, the domain name in dispute is parked at a pay-per-click site (if you don’t know what that is, click here for an explanation). Someone is making click-through fees on that page’s sponsored links, but Seville-Smith denies that he is the one collecting the advertising revenue.

Saville-Smith wrote to me, stating that his domain hosting company would be issuing the following statement in support of his response to the domain name complaint:

I am happy to state on behalf of Fasthosts that the redirection of the domain name to a holding page maintained by Sedo was not the result of a request on the part of Richard Saville-Smith. I am also happy to confirm that Richard Saville-Smith has not sought to benefit and has not benefited financially in any way whatsoever from this domain name through this redirection. I am also happy to state that we, Fasthosts, have carried out no work to promote the domain name concerned nor to register it with search engines or enhance it in any way.

I take Mr. Saville-Smith at his word that this is a true and correct representation of his registrar’s statement. Unfortunately for him, if he wants to disprove this apparent bad faith use, I don’t think that it will come down to whether he intentionally created the pay-per-click site, nor even if he made a penny from it. The owner of a domain name is responsible for what appears on the web page associated with that domain, even if the page is automatically generated by an ad-bot. Saville-Smith could change what is there at any time. So far, he hasn’t chosen to do so. (A screen shot of the page, as it appeared when this was written, appears here).

This is bad faith use under the UDRP, and he is going to have a hard time convincing a panel otherwise. (But, he’s hired an uber-bad-ass domain lawyer to handle the case, so maybe he will!)

This case will turn on whether he registered the domain in bad faith. Since nobody can probe Mr. Seville-Smith’s mind, that matter is most likely going to be decided on the basis of circumstantial evidence.

Mr. Saville-Smith’s story is that he didn’t register it in bad faith, because he bought it for his little boy for a birthday present so that he could get emails on his mobile phone with the “narnia” domain. If true, this would show that the domain was not registered in bad faith.

While this story is plausible, I’m not entirely convinced.

By my research, Saville-Smith owns a pretty large portfolio of domain names. This makes it seem like he could simply be a domain speculator who saw the inherent value in this domain. Saville-Smith says that his domain portfolio is merely a personal collection, or that the domains are owned in trust for other businesses and charities. I suspect that the truth lies somewhere in the middle – that perhaps he has an innocent explanation for having so many domains. Even if he doesn’t and having many domains is not a per se sign that someone acted in bad faith. However, it is a sign that someone is web-savvy enough that they ought to know when a registration could run afoul of the UDRP.

Perhaps Saville-Smith didn’t realize that he was registering a domain name that corresponded to someone else’s trademark, or perhaps he believed that he had every right to register the domain, since the Lewis estate missed the sunrise period. But, ignorance of the UDRP is not a defense, and every mark holder shouldn’t be under an obligation to register every permutation of their trademarks, lest a squatter grab them.

If the only reason that Saville-Smith bought the domain was so that his son could have a email address, (if true, it is adorable), then why not offer to let the Lewis estate have the domain in exchange for a little money for his trouble and a lifetime guarantee that his son will always have an unlimited supply of email addresses, as well as a right to the domain if they ever transfer it or drop it? That seems to satisfy all the interests, and all of this nastiness could be at an end.

Of course, in all fairness to Mr. Saville-Smith, he describes the initial contact with Baker & McKenzie as less than cordial.

[A] New York lawyer phoned my wife and told her they would take legal action against us unless we handed over the domain name we bought perfectly legally after their sunrise period had elapsed.

I don’t know exactly what he means by “New York Lawyer,” but my email exchanges with Mr. Saville-Smith lead me to believe that the lawyer wasn’t exactly looking for a diplomatic solution. Mr. Saville-Smith, like any real man, seems to have gotten his hackles up when someone communicated a threat, however innocuous, to his wife. If the Baker & McKenzie approached him with the air of entitlement that large-firm lawyers sometimes tend to bring to the table, it isn’t surprising that Mr. Saville-Smith reacted with umbrage rather than seeking a collaborative solution.

In the end, Saville-Smith might prevail. The bad-faith use element is a slam dunk.

The bad faith registration element is going to be a little tougher. The Lewis estate can satisfy this element with circumstantial evidence, and it seems like there is a fair amount of that here. If Saville-Smith has some concrete, non-fabricated proof of his good-faith intent (and I am not sure how he will prove that), he may be able to prevail on that prong — and thus in the overall action.

While I might not hold for him based on the facts I have before me at this time, I’m still rooting for him.

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