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TheDomains.com

Interesting How the Media Views Trademark Domain Disputes When Domainers Are Not Involved

June 16, 2008 by Michael Berkens

This is an interesting story

Interesting because it involves a trademark dispute by the trademark holder against someone who is not a domainer, just an end user, and interesting because the media seems to be unanimously siding with the owners, and against the trademark holder

In a story which has been written about in over 45 publications today,  a father registered the domain narnia.mobi for his son  and gave it to him  for  his 10th birthday to use  as an e-mail address.

Seems as the father who is a poet and him and his son were big fans of C.S. Lewis, who wrote the “Chronicles of Narnia”.

C.S. Lewis Ltd owner of the trademark and copyright to C.S. Lewis’s literary works plus the narnia.com website filed a 128 page WIPO action claiming that the father bought the Narnia address “in bad faith” adding: “the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights”.

However the owner of the domain Mr Saville-Smith said “he would refuse to be bullied. Taking this huge 128-page legal action is clearly intended to scare us into handing over something we have that they want just because they say so and are a big firm of lawyers with an extremely rich client, and not because they are in the right.”

Mr. Smith further said “We’ve never made any money out of this domain and have no interest in doing so”

The articles further quote Mr. Smith as saying:

We don’t have the money to hire intellectual property lawyers, so we’re saying ‘help’. One thing for sure is that our response won’t be 128 pages long, it will be more like 10 pages – we’re looking at quality rather than quantity.”

“If the WIPO decides in favor of the C.S. Lewis estate, that would be the end of it for us. However, I don’t expect they will, because their case is flimsy and we’ve done nothing wrong.

As I said this story has now reached 45 publications around the world in about 12 hours.

Each article seems to be phrased in a way where the trademark holder is seen as picking on the domain holder.

Some of the articles even point out that the .mobi registry, like all TLD’s. had a period that trademark holders could have applied for their .mobi but this trademark holder did not and therefore the domain was available for registration.

Certainly none of the articles refer to Mr. Smith as a “cyber criminal” or any such terms that CADNA loves to use against anyone who owns a domain that maybe subject a trademark.

Like I said, interesting how the press is handling this story.

One final note, the domain narnia.mobi goes to a sedo parking page, with the first link on the page going to disney.

Interesting.

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Filed Under: Legal

About Michael Berkens

Michael Berkens, Esq. is the founder and Editor-in-Chief of TheDomains.com. Michael is also the co-founder of Worldwide Media Inc. which sold around 70K domain to Godaddy.com in December 2015 and now owns around 8K domain names . Michael was also one of the 5 Judges selected for the the Verisign 30th Anniversary .Com contest.

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Comments

  1. David J Castello says

    June 16, 2008 at 1:43 am

    This decision will prove interesting.
    I’d place bets that WIPO goes with the CS Lewis Estate, but it will set a wonderful precedent if they side with Mr Smith (Goes To Washington?).

  2. Seyi says

    June 16, 2008 at 5:44 am

    I think there is emotion here because a kid is involved. You know how people feel toward children,; they are like small angels. Most people in the media who would have demonized the father cannot blame him for buying such a gift for his some because most of them are parents too. Nevetheless, the media response could have been different if the father is a pro-domainer…. I hope the father and son have full right to the name.

  3. ferrell says

    June 16, 2008 at 7:26 am

    Put the story on Nancy Grace. She’ll move to waterboard the kid.

  4. admin says

    June 16, 2008 at 7:54 am

    Update

    As of this morning, now 24 hours after the first story on this, it is now been covered in over 2,700 publications

  5. Steve M says

    June 16, 2008 at 9:56 am

    All my domains are now owned by sweet, cute, little, innocent children…who just happen to utilize a PPC provider.

    Whew! Talk about cheap and easy TM protection…

  6. admin says

    June 16, 2008 at 11:21 am

    Steve

    Maybe I should transfer mine to Bandit.

  7. Tony Lam, DMD says

    June 16, 2008 at 11:29 am

    The domain is parked with ads about Narnia. I think the whole story about the email address for the child is total fluff. This is pretty cut and dry TM violation.

  8. jody says

    June 16, 2008 at 11:49 am

    The genius also owns TheQueen.mobi. He was probably saving that one for Queen Elizabeth.

  9. admin says

    June 16, 2008 at 12:33 pm

    Agree with all clear violation

    Point of the post was how differently the media treats a “non-domainer” from us.

  10. Damir says

    June 16, 2008 at 1:13 pm

    Great post – Many Thanks.

    When it comes to the media (80% of them) – their main objective is to publish stories (true or false it does NOT matter to them) so they can sell more of their publications (be it online or offline).

    This is especially true in Australia where the tv presenters smile and look nice but have minimal to no intelligence (common sense).

    Do not believe the media – true Intelligence is found within a person that decides for ITSELF and does not take to mind the media.


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