English 101 for WIP's arbitration panel
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