Lord of the Rings domain fight enters realms of fantasy
Warner Bros puts claim to 1,000 years of history
You're one in a million
The letter quotes the decision of the Court of Appeal regarding One in a Million Ltd as proof of its legitimate intent. This was a landmark decision in the UK courts in July 1998, which upheld the decision to hand over ladbrokes.com, sainsbury.com, sainsburys.com, j-sainsbury.com, marksandspencer.com, cellnet.net, bt.org, virgin.org, marksandspencer.co.uk, britishtelecom.co.uk, britishtelecom.net and britishtelecom.com over to their respective namesake companies.
Unfortunately, this decision is frequently wrongly used by large companies as legal grounds for pressuring people into handing over their domains. (The Easy Group's derided crusade to take over all domain names with the word "easy" made extensive and misleading use of the One in a Million judgement.)
Citing the Appeal Court judgment (which you can find here), Addleshaw Goddard argues that Shiremail.com infringes its clients' rights. The judge in the judgment does say that he doesn't see direct infringement of a trademark as being needed to prove "passing off". However, he does explicitly mention several other aspects of the case that clearly would not refer to Shiremail.com.
In the One in a Million case, the defendants showed a "deliberate practice followed over a substantial period of time of registering domain names which are chosen to resemble the names and marks of other people and are plainly intended to deceive". That is patently not the case with Mr Costelloe.
The judge also stresses: "The trade names were well-known 'household names' denoting in ordinary usage the respective respondent." The same simply isn't true of Shiremail - which is a name that does not exist in any meaningful sense. And while in the decided case, "the motive of the appellants was to use that goodwill and threaten to sell it to another who might use it for passing-off to obtain money from the respondents," Mr Costelloe has no intention of selling the domain.
The matter of goodwill was clearly stated (although not properly argued) by Addleshaw Goddard in its letter, but what of the intention to sell? This may explain a phone call Mr Costelloe took on his mobile a few days after he responded to the original letter by saying he would see them in court.
As Costelloe recalled: "A friendly gentleman ... asks me if I am who he was looking for and continues to query my intentions of whether or not I intend to hand the domain over to them, which I said no. He then instructed me that this was likely to end up with me being taken to court and I kindly replied with 'good'..."
Mr Costelloe has since reported the phone call to the Law Society of England and Wales claiming harrassment.
It's mine, all mine
Perhaps we shouldn't be surprised though. One of three parties being represented, Warner Brothers, has made a habit of stretching its "rights" far into cyberspace.
Back in the early days of the commercial Internet, Warner Brothers sued Andrew Baucom for his District of Columbia Information Site at www.dc.com. Warner Brothers felt that it infringed on their trademark for DC Comics. It is now owned by consulting firm Deloitte.
Then of course there was the infamous campaign against teenage boys and girls who had registered domains with the name "harry potter" in. After massive media coverage of the company's threatening approach to children, the company eventually backed down.
Even in the days before the Internet, Warner Brothers was making a name for itself claiming extraordinary rights over names, prompting Groucho Marx to respond to its claims over his film A Night in Casablanca with the assertion that he believed Warner Brothers may not posses the right to use its "Brothers" name. The letter has been preserved for posterity.
Mr Costelloe remains determined not to have any of it though and has told Addleshaw Goddard he will see them in court. ®
What a load of shire
Here are the areas within the UK that still possess the suffix "shire" - all of whom may have something to say about a US film company's efforts to claim rights over their name.
England: Bedfordshire, Berkshire, Buckinghamshire, Cambridgeshire, Cheshire, Derbyshire, Gloucestershire, Hampshire, Herefordshire, Hertfordshire, Huntingdonshire, Lancashire, Leicestershire, Lincolnshire, Northamptonshire, Nottinghamshire, Oxfordshire, Shropshire, Staffordshire, Warwickshire, Wiltshire, Worcestershire and Yorkshire.
Scotland: Aberdeenshire, Argyllshire, Ayrshire, Banffshire, Berwickshire, Buteshire,Clackmannanshire, Dumbartonshire, Dumfriesshire, Forfarshire, Invernesshire, Kincardineshire, Kinrosshire, Kirkcudbrightshire, Lanarkshire, Morayshire, Peeblesshire, Perthshire, Renfrewshire, Roxburghshire, Selkirkshire, Stirlingshire and Wigtownshire.
Wales: Breconshire, Caernarvonshire, Cardiganshire, Carmarthenshire, Denbighshire, Flintshire, Merionethshire, Monmouthshire, Montgomeryshire, Pembrokeshire and Radnorshire.