Recent Case Notes & Commentary

LEGEND OF ZELDA MAKES A COMEBACK

The popular game Legend of Zelda has made a comeback: as Legend of Zelda: Link’s Awakening, a reprise of the successful game that was launched back in 1993.The whole run of Zelda has been The Legend of Zelda (1987); The Adventure of Link (1988); Legend of Zelda: A Link to the Past (1992); Link's Awakening (1993, 1998 � Game Boy Colour version); The Legend of Zelda: Ocarina of Time (1998).

Legend of Zelda has had a drawn-out history with the UDRP

Now, here it is again - as Link’s Awakening.


What has Legend of Zelda to do with domain names, I hear you ask?


Well, for me, two things.


First, it was the basis of my favourite domain name case [1], which was really a fight between David and Goliath. This time David won. Or, more precisely, Alex Jones, as we will see.


Secondly, the case throws some light on what we mean by bad faith, an important concept in the law of domain names and also in life in general. Accusations of bad faith are easy to make, but hard to prove. As in the following case, lot of them turn out to be good faith.


THE JOURNEY BEGINS

When this story started in 1999 Alex Jones was a 17 year old fan of Legend of Zelda. He was sharp enough to register the domain name <legendofzelda.com>, adopting the name of Nintendo’s popular electronic game. Why Nintendo did not register it before Alex did is anyone’s guess. Anyway, he registered it and set up a website in which he blogged on the game, the characters, plots costumes etc.


Nintendo was furious and made an arbitration claim to get the name from Alex. It said all the usual things, like that Alex was using their trademark, which of course he was, because they had a trademark for LEGEND OF ZELDA and he had put it all in the domain name, <legendofzelda.com>. But Nintendo also had to prove that Alex had REGISTERED the domain name in bad faith and had also USED it in bad faith. This is where it came unstuck.


It argued that Alex was using Nintendo’s trademark, that as a result it could not use it in a domain name and that he was using it to make money. The panellist (or arbitrator) said that Alex using the name to promote the game was not bad faith because he had not tried to sell the domain name; he was not trying to disrupt Nintendo’s business, but was really promoting it because he was trying to generate support for it through the website. True, it did have some links to some commercial sites, but in the whole, it was clear that he was not running the site to make money.


Putting it all together, the Arbitrator said this was not primarily a money making exercise to damage Nintendo, but a fan trying to make the game more popular for its followers by promoting it. It would have been bad faith if he had been trying to cause harm, but Alex was trying to do good.


In fact, because of all the carry-on about the site, Nintendo’s sales of Zelda went up.

Really, the arbitrator was saying this was not bad faith, but good faith, so Alex won and kept the domain name.


THE YEARS ROLL BY

Alex kept the site and it seems that Nintendo gave up, probably because it was doing so well out of the free publicity Alex was giving it. As I looked at the site, it seemed to remain the same, an information site for fans. But now, with the release of Legend of Zelda: Link’s Awakening, things have changed. It is now clearly a full-on commercial site and fully loaded with lots of things to buy.


How long has this been going on, I thought. Well, conducting a search at the Wayback Machine, which enables you to see (sometimes) what a website has been used for in the past, I found that, it seems, by 14 September 2017, it was a fully fledged commercial site[2].


So what happened to young Alex, our valiant knight who stood and won against Nintendo and was non-commercial? Don’t ask me!


I then did a search to see who owns the domain name now, Alex or someone else. Perhaps he had sold it. The result: “Registrant Name: Registration Private, Registrant Organization: Domains By Proxy, LLC”. Hmmm. I wonder what that means. Of course, we do not know when the new owner emerged.

Postscript. I also wondered what Nintendo had learned from this history. I notice, for instance that <legendofzeldalinksawakening.com> has been registered as a domain name, but we do not know by whom (probably due to the new privacy regulations). In any case it is none of my business. I just wanted to tell you this story to show that sometimes David can win against Goliath and that alleged bad faith may turn out to be good faith.

[1] The original decision is at https://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-0998.html


[2] http://web.archive.org/web/20170914043243/http://www.legendofzelda.com/