The (Mouse) Empire Strikes Back

A UK company has been forced to give up seven domain names using the words “Star Wars”, following action by Lucasfilm which is owned by media giant, Disney.

Abscissa.com Limited, a fancy dress retailer from Berkshire, registered two of the addresses –starwars.co.uk and star-wars.co.uk – in 2003 after Lucasfilm, the production company behind the Star Wars franchise, had allowed the registration of the starwars.co.uk domain name to lapse.  In 2014, Abscissa.com registered five further domain names including:

  • uk
  • star-wars.uk
  • star-warsco.uk
  • star-warsco.co.uk
  • co.uk

Abscissa.com used the domains for 10 years as a means of directing web users to its Jokers Masquerade website, where it sold Star Wars costumes and merchandise.

Lucasfilm was bought by the Disney Corporation for $4.1bn (£2.6bn) in 2012.  The seventh film in the franchise called The Force Awakens is scheduled for release in December of this year. The film is one of the most anticipated films of recent times and the trailers for it have generated an unprecedented level of interest on the internet.

Lucasfilm demanded that Abscissa.com surrender all of the domain names to it but Abscissa.com refused and instead offered to transfer to Lucasfilm the starwars.uk domain on the condition that they could continue to use the starwars.co.uk and star-wars.co.uk domains to sell Star Wars branded merchandise. However, Lucasfilm rejected the offer and instead referred the matter to Nominet, the company which manages .uk domain names in the UK.

Lucasfilm lodged a complaint with Nominet’s Dispute Resolution Service arguing that the domain names would cause confusion amongst internet users.  Lucasfilm pointed out that it had five UK Trademarks and one Community Trademark which had been registered between 1984 and 2001 all containing the words “Star Wars”. Lucasfilm said that although Abscissa.com had legally acquired all of the Star Wars domain names, it claimed that Abscissa.com was using those domains to attract users to its website to sell its goods and that Abscissa.com had chosen to register those particular domain names in order to benefit from the “pulling power” of Lucasfilm’s Star Wars trademark and therefore was clearly taking advantage of that trademark for financial gain.

Abscissa.com argued that it had purchased the starwars.co.uk domain name in 2005 from a third party and that Lucasfilm who had owned the registration to star-wars.co.uk in 2001 but had given its rights up later that year.  It therefore contended that Lucasfilm must have been aware of the domain names and the long delay in bringing this case suggested that it did not consider them to be important.

However, Nominet said that the delay in bringing the complaint had no bearing on the case as, unlike normal court proceedings, limitation periods did not apply to the Nominet Dispute Resolution Procedure.  Nominet concluded that Abscissa.com’s use of the domain names had taken unfair advantage of or had been unfairly detrimental to Lucasfilm’s rights and that its use of the domain names had caused initial interest confusion which was considered to be an abusive registration in each case.  Steve Ormand, the Nominate Expert hearing the case stated that:

“The name Star Wars cannot refer to anyone else other than the Complainant [Lucasfilm] it is a unique term coined by the Complainant for the purposes of a science fiction filmed released in 1977 and enhanced as further films have been released.  It is highly likely in my view that any user searching for Star Wars and arriving at the Respondent’s [Abscissa.com] website will have suffered initial interest confusion and falsely inferred a commercial connection with the Complainant.”

 Nominet therefore ruled in favour of Lucasfilm and directed that Abscissa.com transfer all of the domain names to Lucasfilm.

However, this may not be the end of the matter as Abscissa.com has a right of appeal under the Nominate Dispute Resolution Procedure which it has just exercised in the past few days.  The appeal will be heard before a three person panel who will review the original decision. So there may yet be a Return of The Jedi in this real life Star Wars saga.

This case is a good example of a brand owner utilising Nominet’s Dispute Resolution Service procedure to acquire registered domain names from imitators without incurring the expense of pursuing court proceedings for trademark infringement.

Picture of Luke Patel

Luke Patel

Luke Patel
Partner
Commercial Dispute Resolution Team
0113 227 9316
LPatel@LawBlacks.com
@LukeLawBlacks

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