The Stars Wars Trademark and Domains

The Stars Wars Trademark and Domains

A UK company called Abscissa.com has been forced to give up seven domain names using the words ‘Star Wars’, including starwars.co.uk, after being told to do so by production company Lucasfilm. It concerns domain names that were registered with .uk and .co.uk suffixes.

The company in question registered two of the addresses: star-wars.co.uk and starwars.co.uk in 2003. Both sites transferred users to starwars.co.uk, which sold "Star Wars"-themed fancy dress costumes for children. They went onto register 5 more domains this year. They were: star-wars.uk, star-warsco.co.uk, star-warsco.uk, starwars.uk and starwarsco.co.uk.

Lucasfilm, filed a complaint with domain name registry Nominet’s Dispute Resolution Service (DRS) on April 14. Lucasfilm argued that the domains were abusive and would cause initial interest confusion among internet users.

Lucas film stated that it had five UK trademarks and one Community trademark all containing the words 'Star Wars'. The trademarks were registered between 1984 and 2001.

In response, Abscissa.com argued that it purchased the starwars.co.uk domain in 2005 from a third party and that Lucasfilm owned the registration to star-wars.co.uk in 2001, but had given up its rights later that year. Abscissa.com concluded that Lucasfilms must have been aware of the domains and the long delay in filing the case suggested it did not consider them to be important.

The Domain Registry (DRS) stated that the delay in filing the complaint had no bearing on the case and ruled in favour of Lucasfilm.

The DRS stated:

 “respondent’s registration and/or use of the domain names has taken unfair advantage of or has been unfairly detrimental to the complainant’s rights, and the respondent’s use of the domain names has, in the case of all the domain names, caused initial interest confusion, which is an abusive registration in each case”.

All the domains will now be transferred to Lucasfilm.