In a case which vividly revealed the power of a famous name, Hollywood giant, Paramount Pictures Corporation, has succeeded in wresting the internet domain name, paramount.co.uk, from a British businessman who, through a broker, had offered to sell it to the studio for £120,000.
The studio’s name and iconic mountain and stars logo were protected by trademarks and Nominet, the body that polices the internet in the UK, found that the domain name was an ‘abusive registration’ in the businessman’s hands, directing its transfer to the American company free of charge.
The domain name had first been registered in 2005 and Paramount argued that it had been used to provide links to movie entertainment websites in a way that took unfair advantage of its celebrated name. It was transferred into the businessman’s own name in 2012; however, the studio argued that this was an ‘artificial device’ designed to give it a clean slate and ‘leverage value’.
A Nominet expert found that the broker who made the £120,000 offer – and who had ‘impliedly threatened’ Paramount that the domain name would otherwise be sold to the highest bidder – had been acting with the businessman’s knowledge and at least his tacit approval. Whilst accepting that ‘paramount’ is an ordinary English word, the expert ruled that its distinctive association with the studio in the context of film entertainment meant that it could not be viewed as merely ‘generic’.
The businessman insisted that he had not been ‘in exclusive control’ of the domain name until 2012 and that he had not instructed the broker to sell it. He also pointed out that numerous businesses use the word ‘paramount’ in their names. However, the expert found it ‘more likely than not’ that he had, through the broker, offered the domain name to Paramount for a sum ‘considerably in excess of any reasonable out-of-pocket costs’.