With the release of the new Star Wars film Lucasfilm Ltd., LLC (“Lucasfilm”) has, been using the force and striking back, in relation to the owner of a number of star wars related domain names. The case also threw up a number of interesting legal issues. The force really was strong with this case…
A recent decision of the Appeal Panel of Nominet (the official registry for .UK domain names) means that a number of “star wars” domain names will be transferred from Abscissa.com Limited (“Abscissa”) (a fancy dress retailer) to Lucasfilm. What is interesting is that some of the domain names had originally been registered by Lucasfilm but it had allowed these registrations to lapse and they had subsequently been registered and held by Abscissa since 2003 apparently without attracting any attention from Lucasfilm. Abscissa’s mistake seems to have been in seeking to register further “star wars” domain names in 2014 and therefore putting itself firmly on Lucasfilm’s radar. One could even say that these new registrations, caused, a disturbance in the force.
The relevant domain names (and dates of registration) are as follows:
• Starwars.co.uk – 22 January 2003
• Star-wars.co.uk – 19 March 2003
(the “2003 Domain Names”)
• Star-wars.uk – 25 July 2014
• Star-warsco.co.uk – 25 July 2014
• Star-warsco.uk – 25 July 2014
• Starwars.uk – 25 July 2014
• Starwarsco.co.uk – 25 July 2014
(the “2014 Domain Names”)
The appeal decision is useful in clarifying and confirming a number of issues which arise in such cases:
Initial Interest Confusion – Nominet Policy v Trade Mark Law
Initial interest confusion refers to the concept whereby internet users searching for the Complainant’s website (e.g. Lucasfilm’s official Star Wars website) either search using a search engine or try to guess the URL. If the domain name in dispute is identical to the name owned by the Complainant and that name cannot sensibly refer to anyone else there is a risk that a search engine will produce results including the disputed domain name high on the list or that the user will guess the URL for the disputed domain name. The user will therefore visit a website in the hope and expectation that it is operated or authorised by the Complainant.
The concept of initial interest confusion in trade mark law in relation to key words in internet advertising has been criticised by the courts and is therefore not a solid grounding for a finding of trade mark infringement.
The Appeal Panel of Nominet made it clear that the Nominet DRS Policy is not a replication of trade mark law and domain name disputes submitted to Nominet are decided on the basis of the DRS Policy and not trade mark law. They did recognise that if the DRS Policy and the law are too far apart then the DRS Policy will lose some of its value but they found that “…initial interest confusion remains a relevant and helpful concept and is applicable in determining whether or not a registration is Abusive.”
Abandonment of domain names
Lucasfilm had at one point owned the 2003 Domain Names and subsequently let them lapse. Abscissa sought to argue that this “abandonment” meant that allowed anyone coming along later to take it. The Appeal Panel did not agree stating that “…it cannot be the position that the question of whether a registration is Abusive depends on whether or not a brand owner has sought to obtain the relevant registration itself, or having at one time obtained a registration allows it to lapse. Brand owners are entitled to prioritise what domain names they acquire, keep and use. They do not have to register or hold onto every domain name containing their brand name in order to be able to assert that other registrations for that brand name are abusive.”
Lack of action against third parties
Abscissa also sought to argue that as Lucasfilm had not brought complaints or proceedings in relation to other domain names including the term “starwars”. The Appeal Panel unsurprisingly did not support this approach stating that “A complainant is not required to fight its battle on all possible fronts but can choose which action to take.”
The Appeal Panel looked generally at the question of delay. Here Lucasfilm had delayed for nearly 12 years before bringing this complaint to Nominet.
While the Appeal Panel did not rule out there being circumstances in which delay could be a relevant factor, for example where the Respondent was unfairly prejudiced by the delay or where the Respondent had built up its own goodwill in the domain name during the period of delay, it ruled, “….that, where the use complained of is ongoing, then delay alone should not automatically preclude a complaint being brought.”
The decision may look a little harsh, particularly in relation to the older 2003 domain names, which the Respondent had used for many years without complaint. Ultimately however it makes sense because there is no doubt that the domain names were acquired and used to take advantage of Lucasfilm’s rights in the name Star Wars and as this was done without Lucasfilm’s permission it was clearly unfair.
If you aren’t receiving our legal updates directly to your mailbox, please sign up now
Please note that this blog is provided for general information only. It is not intended to amount to advice on which you should rely. You must obtain professional or specialist advice before taking, or refraining from, any action on the basis of the content of this blog.
Edwin Coe LLP is a Limited Liability Partnership, registered in England & Wales (No.OC326366). The Firm is authorised and regulated by the Solicitors Regulation Authority. A list of members of the LLP is available for inspection at our registered office address: 2 Stone Buildings, Lincoln’s Inn, London, WC2A 3TH. “Partner” denotes a member of the LLP or an employee or consultant with the equivalent standing.