Written by Jim Dennis
Once upon a time in a galaxy far, far away…
The release of the first Star Wars motion picture in 1977 launched one of the most popular film franchises ever made; spawning two sequels, three prequels, one of the most instantly recognisable theme songs ever composed, and some great costumes for fancy dress parties. Now, 38 years following the initial release of Star Wars: A New Hope, the long awaited seventh film is due at the end of 2015.
Such popularity and longevity is undoubtedly why the Walt Disney Company (Disney) shelled out a whopping £2.6bn in 2012 to buy Lucasfilm, the production company behind the popular movie franchise, and all the intellectual property rights (including trade marks) to the Star Wars brand.
However, Disney did not acquire rights to the Star Wars UK domain name (including starwars.co.uk) whose registration Lucasfilm allowed to lapse in 2001.
The current owner of starwars.co.uk (and other similar domains, including starwars.uk) is a fancy-dress retailer from Berkshire. Abscissa, the parent company of the fancy-dress retailer “Jokers’ Masquerade”, had offered to transfer the starwars.uk domain to Disney on the condition that it could keep the starwars.co.uk and star-wars.co.uk domains to sell genuine Star Wars merchandise. Disney refused, and Lucasfilm complained to Nominet (the company which manages .uk domain names).
Now, after a three month Dispute Resolution Service (DRS) procedure, Nominet have ordered Abscissa to transfer ownership of their Star Wars domain names to Lucasfilm.
So how does this happen? Nominet will only use the DRS force to transfer ownership of a domain name from the current owner to a complainant if it is proved on the balance of probabilities that:
1. the complainant (in this case, Lucasfilm/Disney) has rights in respect of name or trade mark which is identical or similar to the domain name; and
2. the domain name is classed as an “abusive registration”.
“The name Star Wars cannot sensibly refer to anyone else other than [Lucasfilm/Disney]” said Nominet. So the real issue was whether Abscissa’s use of the Star Wars domains was “abusive”.
Abscissa legitimately acquired starwars.co.uk (and other Star Wars domains) from a third party in 2005, without the use of any Jedi mind trickery, and used the domain names as portal websites that redirected viewers to its joke.co.uk domain.
Lucasfilm argued that by doing this Abscissa was using the “pulling power” of the Star Wars name and trade marks to attract users to its website in order to sell Star Wars branded costumes and products. Lucasfilm argued further that Abscissa’s use of the domain names was disrupting its business by confusing consumers into believing that the domain names were operated, authorised, or otherwise connected with Lucasfilm and the “official” Star Wars brand.
Nominet agreed, holding that Abscissa’s use of the Star Wars domains was an abusive registration that
1. was unfairly detrimental to Lucasfilm/Disney’s rights; and
2. falsely implied a commercial connection between itself and Lucasfilm/Disney.
Nominet also found that Abscissa’s use of the domains for over ten years was irrelevant.
Abscissa had until 20 July to appeal the decision, or transfer the names to Lucasfilm.
Brand owners want protection from others piggy-backing on the success and “pulling power” of their popular brands. Lucasfilm/Disney’s grievance was that Abscissa were using UK domain names that contained their Star Wars trade mark.
It is not automatically unfair for a party to incorporate a registered trade mark into a domain name. However, it will be considered an abusive registration if the effect of using that domain implies a commercial connection between the owner of the domain and the brand owner.
This is a good example of a brand owner deploying Nominet’s (relatively inexpensive) DRS procedure to acquire registered domain names from its imitators without incurring the expense of issuing Court proceedings for trade mark infringement.
If you have any questions relating to trade marks or domain names, please contact Matthew Hiscox of the IP, Media and Technology team (firstname.lastname@example.org).
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