Help! Someone is using my trade mark as a domain name

Having a trade mark does not automatically give you the right to the associated domain name (and vice versa).#

If, as a trade mark owner, you would like to use your trade mark as a domain name, it must be purchased from the appropriate Registrar. Domain names are usually allocated ownership on a first come, first served basis. However, conflicts often arise where IP rights are involved.

Avoiding domain name conflicts #

Nominet, the organisation which oversees ‘.uk’ domain names, provides a Dispute Resolution Service (DRS) for such conflicts and guidelines on how they are judged.

In a recent dispute, Lucasfilm was successful in obtaining an order for the transfer of the domain starwars.co.uk from independent fancy-dress retailer, Abscissa. The domain had been used by Abscissa to sell Star Wars themed fancy dress for over ten years.

Nominet requires that two conditions are met before ordering the transfer of ownership of a domain name:

1. The complainant must have rights (e.g. a trade mark) in respect of the domain name in dispute.
2. The current registration must be judged to be ‘abusive’ of the complainant’s rights.

Nominet ruled that both criteria had been met by Lucasfilm and that Abscissa’s registration and/or use of the domain name had taken unfair advantage of, or been unfairly detrimental to, the rights in the ‘Star Wars’ name. The domain name had been used by Abscissa to attract users to its website and this caused initial interest confusion as users would expect the domain name to be associated with Lucasfilm.

Commenting on the case #

There are no prizes for guessing the reason why Lucasfilm brought its complaint against Abscissa when it did. However, this case offers a reminder that the fact you may have owned a domain name for many years (and used it) does not mean that a brand owner cannot take action against you for recovery of the domain name. Whilst the decision may seem harsh, particularly as Abscissa was selling licensed Star Wars products, Nominet was satisfied that:

• Any user searching for Star Wars and arriving at Abscissa’s website will have suffered initial interest confusion and falsely inferred a commercial connection with Lucasfilm.
• Abscissa had benefitted from the ‘pulling power’ of the name Star Wars to attract users to its website.

The above factors are evidence of an abusive registration and therefore Nominet had little choice but to order the transfer of the domain name.