May the force be with you

Intellectual Property infringement is unfortunately a growing problem on the Internet.  Many individuals and organizations look to profit from exploiting the digital assets of others, whether it be by selling counterfeit items, misuse of a logo or registering domain names with the intent of profiting from another’s trademark or brand name.  That practice is often known as domain hijacking, or cybersquatting.  However, there are often cases where the lines of infringement are blurred.

Last week one such case hit the media.  A Berkshire-based (UK) fancy-dress retailer found themselves going toe-to-toe with Disney over the use of the domain name  Disney bought the rights to the Star Wars brand back in 2012 with its purchase of LucasFilms for over $4bn and therefore pursued the ownership of the domain name, along with a number of others that all included the Star Wars brand name.

The company who owned the domain name, Abscissa, were not using the domain name in any harmful way to the Star Wars brand.  In fact they were using to strengthen it by selling legitimate official merchandise.  The company had owned the domain name for 12 years without any issues or complaints from LucasFilms.

The compelling event seemed to be the launch last year of the new dotUK Top Level Domain by Nominet.  Under their grandfathering rules, the holder of the existing domain has the right to the corresponding dotUK domain.  "If the new Star Wars films by Disney were not being released, we wouldn't be having this discussion," Mark Lewis, Abscissa's chief executive, told the BBC.

After being contacted by Disney's legal team, the retailer offered to transfer the domain to them if they were able to continue to use the and  However, Disney refused and the matter was referred to Nominet for their ruling.

Under Nominet’s dispute procedure, they required two facts to be proven for it to rule in favour of Disney, namely: The complainant has rights in respect of the name involved and the current registration is judged to be "abusive".

Nominet’s spokesman Steve Ormand explained why the domain names were handed to Disney. "Star Wars cannot sensibly refer to anyone else other than the complainant.  It is highly likely in my view that any user searching for Star Wars and arriving at the respondent's website will have suffered initial interest, confusion and falsely inferred a commercial connection with the complainant.” The fact that prior use of the domain names for over 10 years had occurred was considered immaterial.

The case should also be a reminder to any organization on the perils of using trademarked terms in domain names that they have no right to. Whilst some may claim possession is nine tenths of the law, intellectual property is that one tenth that doesn’t always conform.