A year after a change to UK domain names a skirmish in (web)space shows how effective Nominet’s Dispute Resolution Service can be in protecting a trade mark owner’s rights.
When the Star Wars blockbuster film franchise was bought by Disney in 2012 as part of its $4.1bn acquisition of Lucasfilm, Disney took over control of the ‘Star Wars’ brand worldwide, so why are they now in dispute with an online fancy dress shop?
There has been an explosion of web domains in recent years with waves of new top level domains becoming available. gTLDs from the straightforward ‘.services’ to the more controversial ‘.sucks’ can now be registered. These offer a ‘sunrise period’ during which owners of rights in a name can buy up relevant domain names before others have access.
The UK registry, Nominet, made its own change last year, allowing users to register ‘.uk’ rather than having to use third level domains ‘.co.uk’ or ‘.org.uk’. Existing registrants of unique third level UK domains were given until June 2019 to register a second level ‘.uk’ domain. That should work in situations where the existing registrations are in the same hands as the trade mark owner, but this conflict shows what happens when they are not.
Abscissa.com Ltd runs an online shop called Joker’s Masquerade. It offers a wide range of fancy dress costumes including Star Wars character outfits. The shop’s primary domain is ‘joke.co.uk’. But it also registered a series of Star Wars domains that redirect to the main shop website. Indeed, Abscissa.com has owned these names for ten years and more. As the registrant of ‘starwars.co.uk’ Abscissa.com was offered the ‘starwars.uk’ domain and duly bought it.
Disney complained to Nominet using the Dispute Resolution Service on the strength of its UK and EU trade mark registrations. Despite the long period of ownership of the third level domains, Nominet ruled that Abscissa.com should hand over the whole suite of domains, including ‘starwars.uk’, to Disney. Unlike standard court proceedings, limitation periods don’t apply to this procedure, and it is, by comparison, low-cost and quick.
So despite Abscissa.com’s uninterrupted use of the domains for many years, the rights of the trade mark owner triumphed. A sequel is possible – Abscissa.com could have filed an appeal. We've not seen any news of that, but the contested domains remain in Abscissa.com's name and still link to their shop.
We might ask ourselves why Lucasfilm had made so little effort to prevent use of the Star Wars name in domain names in the past. Big brands normally operate an active programme of monitoring and control, but policing every possible permutation of a trade mark on the internet is not possible, especially with a worldwide brand. The release of new gTLDs is making that task increasingly challenging.