Jokers’ Masquerade has been the owner of domain names star-wars.co.uk,star-wars.ukAndstarwars.uk since 2003. By using these domains, it redirected people to its Star Wars fancy dress section. However,Lucasfilm owned by Disney has held a UK trademark for the name Star Wars since 1984. As part of its acquisition deal, it gained the intellectual property surrounding the franchise as well.
So, in July 2014, the company approachedJokers’ Masquerade and askedto have its domain names something which parent company Abscissa.com reused to do. It claimed that it had only started using the domain when Lucasfilm had let its registration lapse in 2001.
After being contacted by Disney lawyers,Abscissaoffered to transfer its starwars.uk domain to the company if it could continue using starwars.co.uk and star-wars.co.uk to sell legitimate Star Wars-branded merchandise. Disney refused and instead took the fancy dress retailer to court.
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Nominet’s expert Steve Ormand suggested the fact that Disney did not register the complaint for such a length of time is not up for debate when considering the issue. He added that Abscissas registration and use of the domain names had taken unfair advantage of Disneys rights.
After losing the preceding legal case, Nominet has orderedAbscissato hand over the domain names, includingstarwarsco.uk, starwarsco.co.uk and star-warsco.co.uk.
“If the new Star Wars films were not being released, we wouldn’t be having this discussion,” Mark Lewis,Abscissa’s CEO said. “They wanted the starwars.uk domain, they haven’t got it, and in essence they’ve thrown their teddies out of the pram.”
Ormand responded by saying that Star Wars can’t “sensibly refer” to anyone other than Disney. He claimed that any user searching for Star Wars and arriving at the Jokers’ Masquerade’s website will have most likely done so while looking for a legitimate Disney site. Furthermore, the person might think that they were buying the costumes directly from Lucasfilm.
“I am satisfied that the respondent has taken advantage of the ‘pulling power’ of the name Star Wars to attract users to its website,” Ormand ruled.
The company has until 21 July to appeal the decision.