The Berkshire-based company Jokers’ Masquerade is fighting back against a ruling, made by Nominet, that they must surrender the starwars.co.uk domain to Disney.
The domain name in question, starwars.co.uk, has been owned by Chief Executive Mark Lewis’ company for over a decade, and he believes that the two companies would not be engaged in a legal battle if Nominet had not introduced the shorter “name.uk” domains last year.
Lewis, who’s company sells a whole range of range dress costumes, uses the starwars.co.uk domain to redirect shoppers to a Star Wars section of his Jokers’ Masquerade online store. As well as the aforementioned domain, Jokers’ Masquerade’s parent company, Abscissa, also owns a collection of Star Wars based domains and has been asked to also surrender those to Disney. The domains include:
Chief executive Mark Lewis said Abscissa had used two of the addresses for more than 12 years without being challenged.
“I can’t believe that over the last two decades that someone from either Lucasfilm or Disney did not do a WhoIs [search] and find that that starwars.co.uk and star-wars.co.uk were not registered to them,” he told the BBC.
“There has to be a point in time, surely, where a registrant has to be able to hold some title.”
Whilst Disney did not currently own any of the domains, he did mention that before he owned star-wars.co.uk Lucasfilm were the previous owners. However, Lucasfilm decided not to renew the domain and therefore Mr Lewis decided to take the opportunity to do so.
Nominet requires a complainant to prove that a domain name registration is “abusive” for it to agree to transfer ownership.
Its initial ruling supported Disney’s claim on the basis that consumers visiting the sites would have “falsely inferred a commercial connection” between the fancy dress store and the film franchise.
But Mr Lewis disputes this conclusion.
“We haven’t abused them,” he said.
“We haven’t rented them, we haven’t offered them for sale – the internet domains point to legitimate Star Wars-branded costumes that we’ve been selling for the past 13 years.”
Disney bought Lucasfilm – the production company behind Star Wars – in 2012 for $4.1bn (£2.6bn). It plans to release a new film – The Force Awakens – in December.