May the force be with you… Disney?

From a galaxy far, far away to a fancy dress retailer based in Berkshire. How has Disney found itself in a legal dispute with the online shop, Joker’s Masquerade?

The new owner of the Star Wars franchise, The Walt Disney Company, recently discovered that Abscissa, the Company that operates the fancy dress shop, is the unlikely owner of a series of ‘Star Wars’ related domain names. For over 10 years, they have been using the domain ‘starwars.co.uk’ as a portal to their website, where customers could then go on to purchase their favourite Chewbacca costume.

On discovery of the domain names, Disney brought a dispute under the dispute resolution service (the DRS) of Nominet (the body that oversees all .uk domain names). This service provides parties with a much cheaper alternative to the courts, and by following their recognised policy and procedure; disputes can be speedily dealt with, normally in favour of the trade mark owner.

In this case, the DRS found in favour of Disney, finding them to be the rightful owner of the domains regardless of the fact that Abscissa had been operating this way, uninterrupted for so long. This was due to the substantial reputation of the Star Wars brand and Disney’s ownership of a series of trade marks. Abscissa were also found to have been taking unfair advantage of this reputation for their own commercial gain, and this was said to be detrimental to Disney.

Abscissa are now appealing the decision and will no doubt be holding out for those wise words from Yoda to ring true; that in the face of Disney, ‘Size matters not….’

So how can you protect your brand online?

This case has been useful in highlighting the dangers that now exist for brands online, even for those as powerful as Disney. The World Wide Web is growing rapidly so it is increasingly important to know how you can protect your brand in this new era of domain name expansion. Only 4 years ago there were just 22 different domain types (such as .com, .net and .org). Today there are over 1000, with new variations made available each month (such as .blog, .shop and .sucks).

Currently, there is no law in place to prevent unofficial third parties owning particular domain names, which are sold on a first come, first served basis. Risks include potential trade mark infringement and becoming victim to the activity known as ‘Cybersquatting’, which is essentially the process of registering certain domains in bad faith, with the aim of financial gain. ‘Cybersquatters’ effectively hold those with an interest in the domain, to ransom.

Awareness is key and knowing the options available to you can be extremely beneficial in the long-run. There are a number of different ways to protect yourself or your business, and these include:

• Managing and renewing your existing domains regularly so that they do not lapse and are not snapped up by a third party;
• Keeping track of the new domain names coming to the market and registering and acquiring key domains as soon as they become available to prevent anyone else doing so;
• Using the DRS or its equivalent for the particular domain type; or
• Proceeding to litigation for a claim for trade mark infringement or passing-off.

For further advice on how to protect your business online, please contact Antony Hall, Partner and Head of Commercial at Mincoffs Solicitors on 0191 281 6151 or email ahall@mincoffs.co.uk.