If you know anything about me, you know (or you can probably guess) that I’m an avid gamer. While a lot of game series come and go, there is one that continues to have a place in my heart: Nintendo’s Legend of Zelda franchise. In celebration of today’s official release of The Legend of Zelda: A Link Between Worlds (read: There goes my weekend!), I thought it would be fun to bring you a law post that was Zelda themed.
What Is the Legend of Zelda?
The Legend of Zelda is a game series that follows the adventures of a tunic-clad, sword-carrying adventurer named Link in the imaginary, far off lands of Hyrule. While the games take place in various time periods and (save for some exceptions) different incarnations of Link, they all seem to focus around a similar storyline—the fulfillment of a prophecy of thwarting evil over the lands of Hyrule and saving the princess Zelda.
The Legend of Zelda franchise is a puzzle-based game series that packs a powerful punch for all age groups. It forces players to think out of the box and to solve puzzles using the resources they gain throughout the gameplay. For those of you who have never played the series before, I recommend picking up a copy of the Legend of Zelda: Ocarina of Time (“OoT”) before anything else. This game, which was first released in 1998 (and now has a Nintendo 3DS re-release), is a perfect example of how thoughtfully executed the storyline is, and how innovative the gameplay strives to be throughout the entire series.
Speaking of OoT: the late 1990’s are exactly where today’s legal blog post begins. Trouble may have been afoot in Hyrule, but back in 1999, it was present on the Internet as well. Instead of swords and magic, this legal battle was fought via arbitration.
“You’ve Met With A Terrible Fate, Haven’t You?”
Our story starts in 1999, when a 15 year old Zelda fan named Alex Jones started up a fan website under the URL: legendofzelda.com. The website, which was named after the franchise, was a space on the Internet where Alex wanted to talk with other like-minded Nintendo fans about The Legend of Zelda. The website discussed the Zelda franchise, had forums for discussion, and even had links to the official Nintendo website. At the bottom of the page, Alex made sure to place a disclaimer that his website was not affiliated in any way to Nintendo and that it was merely for fan purposes only.
Nintendo of America, Inc., which was the legitimate owner of “THE LEGEND OF ZELDA” trademark, saw Alex’s website and wanted to claim the domain name for itself. The company filed a formal complaint in the summer of 2000 with the Internet Corporation for Assigned Names and Numbers (ICANN) to try and get the rights to the website. ICANN responded with an administrative panel decision in fall of 2000 that might surprise all of us, considering the circumstances.
Alex, who had used this website merely for fan purposes only, went against all odds and actually got to KEEP the legendofzelda.com website, despite Nintendo’s claims of cybersquatting and infringement. (Of course, you can read the whole decision here). While today the URL points to a Facebook group, this was a big win for “the little guy” with respect to domain name disputes.
How Domain Name Disputes Work
So, how do domain name disputes work in the first place? Is it normal for a big company to sue “the little guy” over a few words that point to a location on the internet?
In short, the answer is: yes. This is especially true when the person bringing the complaint is someone that owns the official trademark or if the trademark is something that’s acquired “famousness”.
Domain disputes are somewhat common and are a tactic for brand preservation. Like a parcel of real land, domain names are a very specific piece of property. Even with the new gTLD’s on the way in the coming months, this continues to hold true. There is nothing in the whole world (or in cyberspace for that matter) that can match the exact placement of a particular domain. Once a domain name like legendofzelda.com is taken, there is no one else in the world that can own it.
The only way for another owner to take over this domain is to :
- purchase the domain from the original owner
- wait for the domain name to lapse and to take it when it is released; or
- file a domain dispute with ICANN
Because Nintendo was the rightful owner of THE LEGEND OF ZELDA trademark, it decided to take option 3, and to fight Alex in a legal battle over the ownership of the website.
All website disputes are handled via arbitration hosted and operated by ICANN. Arbitration is a way to resolve legal disputes outside of a courtroom (and, If you’ve ever purchased a domain name…you’ve signed an agreement that makes this dispute resolution process mandatory.) With each domain name dispute, ICANN assigns one person (or a group of people) to read the case and to decide, based on the circumstances, whether the person bringing the complaint is entitled to take over the domain.
Domain Name Dispute Criteria
Domain Disputes are handled on a case-by-case basis…and they are based very heavily on the fact-based criteria surrounding the issue. In order for a domain name dispute to be successful, the ICANN arbitrator (or panel of arbitrators) must decide that the person bringing the domain name dispute showed the following:
- the domain name in question is identical or confusingly similar to a service mark or trademark to which the complaintant has rights;
- the current owner of the domain has no legitimate interest in the domain name; AND
- the domain name has been registered or is being used in bad faith.
As you can see, the criteria for domain name disputes are sometimes a murky and difficult thing to prove.
In the case of the Zelda fan site, Nintendo was able to prove that:
- the domain name was similar to the trademark in question (of course, legendofzelda.com is the same thing as the LEGEND OF ZELDA trademark). AND
- that Alex had no “legitimate interest” in owning the domain name.(Say What? For those of you confused about why Alex had no legitimate interest in the free speech surrounding his ownership of the website: the arbitrator argued that a trademark owner’s interest in protecting and marketing their registered trademark is greater than the need for a fan club to express their approval of a product when the domain name is identical to the registered trademark)
BUT, Nintendo struck out when it could not prove that Alex used the website in bad faith.
An arbitration board generally judges “Bad Faith” for purposes of domain disputes based on the domain name owner’s actions. If the domain name owner tries to sell the website for monetary gain, or to disrupt the complaining party’s business in any way, then it is generally considered to be a domain name that is owned in “bad faith”.
Here, it could not be said that a 15-year-old Nintendo fan had reserved the domain name in bad faith. Instead, the opposite was found to be true. Alex bought the domain name without intending to profit in any way from it, and instead used the website to promote and educate the world about the Legend of Zelda franchise. If anything, Nintendo benefitted from this boost of fan support.
The arbitrator in this case, after not finding a bad faith ruling, dismissed the case. Alex, today’s hero, got to keep the website. As I mentioned, to this day: Nintendo still does not own the legendofzelda.com domain.
I hope that you enjoyed this little story of Nintendo of America, Inc. v Alex Jones. The truth is, these types of domain dispute battles are pretty common. A trademark owner is responsible for policing his brand, and so domain name disputes are part of the process. If you ever find yourself staring a cease and desist or a domain name dispute case in the face, you should definitely contact a lawyer who is knowledgeable about internet law. While Alex’s case may have been an ideal outcome, not all cases are judged the same way. Depending on the arbitrator or the situation, things can come out much differently.
Well, that’s it for today folks…time to get started on the all new Zelda adventure! Oh, and –Happy weekend!