The latest battlefront

For many of us, the Star Wars saga holds a special place in our hearts – a childhood fascination which has stayed with us into our adult lives. The iconic characters, striking spacecraft and instantly identifiable costumes have made the franchise a huge commercial success in the four decades since its creation.

Perhaps it therefore comes as little surprise that Lucasfilm (now under the ownership of Disney) has always taken the protection of its intellectual property rights in the franchise seriously, with various high profile court actions in recent years. However, the blockbuster giant’s latest battle comes in the form of a domain name dispute.

Over the course of a decade, the well-known online fancy dress retailer Abscissa registered and used a number of domain names, including “starwars.co.uk” and “star-wars.co.uk”, to direct shoppers to the Star Wars product pages of its online store.

However, following a hearing in July before Nominet, the UK domain name registry, six domain names under Abscissa’s control have been transferred to Lucasfilm, putting a firm halt to such use. So what exactly are the rules when it comes to registration and use of domain names?

A disturbance in the force: competition leads to conflict

In the relatively short period since its creation, the internet’s size and commercial application has expanded exponentially. As a result, so too has the potential value of domain names, meaning that with increasing competition for control over certain words, trade mark legislation, competition law and passing off all play an important role in policing their use.

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Competition inevitably breeds conflict, and whilst a domain name can be purchased and registered with minimal formalities or monitoring, what counts as legitimate use is often more complex. At one end of the scale is obvious use, where a proprietor is using a domain name that directly relates to its business name.

At the other end, cybersquatting, use for counterfeiting purposes and reverse domain name hijacking. What sits between these two extremes is more of a grey area. As in Abscissa’s case, this can include the use of an identical or similar trade mark to that of another, yet for a seemingly genuine purpose.

In the early days, before the introduction of the uniform domain name dispute resolution policy (or “UDRP” as its commonly known), the owner of an infringed trade mark had to rely on bringing a successful claim through the courts for trade mark infringement in order to protects its rights.

However, UDRP now provides right holders with an attractive alternative procedure for protecting their IP interests in respect of general top-level domains (gTLDs), with similar policies having also been adopted by the registries controlling country code top-level domains (ccTLDs) too. The main advantages of this relatively modern adjudication process are quicker outcomes and reduced costs through less formal, streamlined procedures.

Whilst there are minor differences between how the UDRP is administered from country to country, the overall approach is essentially the same. Following the filing of a complaint, the registrant is provided with an opportunity to respond before the facts of the case are put before an expert or panel of experts specialising in trade mark law and domain name issues, for examination and a decision.

However, it is worth noting that this does not restrict a dissatisfied party appealing the decision, or even referring the dispute up to the court post-adjudication.

What are the rules of the Galactic Senate?

So what exactly constitutes sufficient grounds to bring such an action? A complainant must establish three things: (i) that it has rights in respect of the name; (ii) that the registrant has no legitimate interest in the name; and (ii) that the domain name has been registered and is being used in bad faith (also known as an “abusive registration”).

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In the case of Lucasfilm (which cited six UK and Community trade mark registrations for “Star Wars”) there was no question that it had sufficient rights in the name. On the second and third limbs, Nominet found that whilst Abscissa may have been using the domains in relation to a genuine business operation, it lacked any legitimate connection to the brand name and its use was likely to cause initial interest confusion amongst users who may falsely infer a common connection between Abscissa and Lucasfilm, which Nominet considered amounted to bad faith under its DRS Policy.

Whilst Abscissa attempted to challenge the complaint on the grounds that Lucasfilm had delayed considerably in bringing its action, Nominet firmly rebutted this, citing substantial case law which established that delay alone was not sufficient grounds to deny a complainant the enforcement of its rights.

The next chapter…

Abscissa has appealed the decision, so this may not be the end of the road. In fact, the appeal decision is likely to coincide with the release of the latest Star Wars film “Episode VII” in December, so the stakes could not be higher…

Further reading: Company law – transparency and accountability