Business Law & Compliance

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Disney uses “pulling power” to nab Star Wars domain names from Berkshire fancy dress shop

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Jokers’ Masquerade has been the owner of domain names star-wars.co.uk, star-wars.uk and starwars.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 approached Jokers’ Masquerade and asked to 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, Abscissa offered 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 Abscissa’s registration and use of the domain names had taken unfair advantage of Disney’s rights.

After losing the preceding legal case, Nominet has ordered Abscissa to hand over the domain names, including starwarsco.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. 

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