When Lucasfilm beat the cybersquatters to the punch

4 May 2021

On STAR WARS Day, H&A comments on a decision of the WIPO Arbitration and Mediation Center resulting from the registration of several "STAR WARS" domains and also analyses the requirements.

4 May 2021

This May 4th we would like to take the opportunity to commemorate STAR WARS Day at H&A by commenting on one of the many resolutions that the audiovisual giant, Lucasfilm Limited Ltd. has garnered in its favour since its incorporation back in 1971.

Our story goes back more than two decades (though not in a galaxy far, far away, but in the USA), when Lucasfilm was already an empire responsible for the production of three Indiana Jones films and STAR WARS Episodes IV, V, VI and I, achieving a worldwide reputation as one of the largest audiovisual production companies in history. But Lucasfilm’s success transcended the screen, as the CEOs of the company were visionaries who knew how to protect their brands (today more than 2,000 worldwide) and extend their business to other profitable sectors, such as merchandising, through the granting of million-dollar licences.

At this point, it is also time to introduce the rest of the protagonists of this story.

On the other side we find Cupcake City and John Zuccarini (undoubtedly the least known actors in this representation), who, on 7 May 1999, taking advantage of the boom of on-line downloads and the release of the latest film in the most famous saga of the universe (it was just a few days before the release of Episode I), decided to register in their name several domain names containing the STAR WARS sign (specifically, <starwarspics.com>, <starwarspictures.com>, <starwarssounds.com>, <starwarstrailer.com>, <starwarswallpaper.com>) and use them to link to several other websites of theirs that included content such as song lyrics, videos or online games.

At that time, domain name disputes could only be resolved through Courts, but this was soon to change. In order to speed up the process of revocation or transfer of cybersquatted domains, in December 1999 the World Intellectual Property Organisation (WIPO) Arbitration and Mediation Center began offering domain name dispute resolution services under the Uniform Domain Name Dispute Resolution Policy (UDRP). The rules of the game had changed.

It was thus twenty years ago (on 1 May 2001) that Lucasfilm decided to take action by contacting Cupcake City and Mr Zuccarini to let them know that the registration and use detected infringed their industrial property rights. Despite receiving a letter from no other than Lucasfilm, the owners of these domains chose not to respond, so the US giant decided to go to the WIPO Arbitration and Mediation Center to request that the domains be transferred to them.

In order for WIPO to decide to transfer or cancel a domain name subject to the UDRP, three circumstances must be met, which Lucasfilm now had to prove:

  • that the domain names are identical or confusingly similar to a trademark in which the complainant has rights;
  • that the holder of the domains has no rights or legitimate interests in respect of the domains;
  • that the domain names have been registered and are being used in bad faith.

Lucasfilm referred in this respect to the following circumstances:

  • Their STAR WARS trademarks were by then already globally recognised signs as a result of the extensive use carried out both by themselves and through third parties.
  • The sign STAR WARS had been included in its entirety in the domains at issue, with only a number of generic and descriptive terms having been added which did not remove the likelihood of confusion among users.
  • Cupcake City and Mr. Zuccarini had not proved that they had any right or legitimate interest in the domains;
  • The domains were registered and were being used in bad faith, inasmuch as:

a. They were applied for when the STAR WARS trademarks were already known worldwide (and only a few days before the release of Episode I);
b. the owners were already known cybersquatters who registered domains including third party signs to attract traffic to their websites and take advantage of their reputation;
c. the terms that were added to the domain (pic, pictures, trailer or sounds) were aimed at attracting fans of the saga and obtaining an economic return by taking advantage of the reputation of STAR WARS.

For their part, the defendants chose to respond (this time) by denying the major and claiming:

  • That the marks were not identical or confusingly similar, having used generic and/or descriptive terms;
  • That they had legitimate rights and interests in the use of the STAR WARS sign, relying free speech, free enterprise and property interest in the domains;
  • That the domains had neither been registered nor used in bad faith:

a. Those had not been offered for sale
b. No activity was carried out that could lead to confusion among users as to a possible link with Lucasfilm.

As foreseeable in view of the background, the panel concluded in its decision of 15 September 2001 (Case No. D2001-0700) that the requirements to order the transfer of the domains to Lucasfilm were met and clarified that:

  • The incorporation of the mark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark and the addition of generic or descriptive terms does not affect this.
  • The use of these domains was intended to allow users searching for images, music or the STAR WARS trailer to access the defendants’ websites where they would find a number of third party´s advertisements and users are likely to be misled into believing that Lucasfilm sponsors or endorses these advertisers in some way.

So everything returned back on track and the domains became the property of Lucasfilm, although today they are inoperative or for sale, but that’s another story…

MAY THE FOURTH BE WITH YOU, GEORGE. CONGRATULATIONS.

Marta Gimeno

Marta Gimeno

Abogada.Departamento Patentes.

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