Galactic battle for the Star Wars domains





A little known story about an epic cyberspace battle over the Star Wars domains.

Famous blockbuster series of Star Wars movies marked our childhood as well as adult lives with its fascinating story of the battle between good and evil in a galaxy far away, enhanced with many different races, characters, and parallel storylines.


In the light of the upcoming anniversary of the Star Wars franchise, we wanted to share a little known story about domain troubles that they had a few years ago. Not only that their movies made great success but also video games, clothes, toys, memorabilia, and many other Star Wars-themed products. Once Lucasfilms was sold to Disney they started researching and going deeper to find overlooked domains with the Star Wars name. The problem appeared when they realized that a well-known dress retailer Abscissa registered and used a number of domain names, including “starwars.co.uk” and “star-wars.co.uk”, to direct shoppers to the Star Wars product pages of its online store. Abscissa had this domain for over a decade so they refused to give them up when they were asked. Nominet - which oversees .uk domains had to step in and play the Galactic Senate in this story.  


These are the 6 domains that caused a disturbance in the force and around which the battle was fought:


starwars.uk

star-wars.uk

star-wars.co.uk

starwarsco.uk

starwarsco.co.uk

star-warsco.co.uk


In the case of Lucasfilm, there was no question that it had sufficient rights over the brand name. Abscissa tried to challenge the complaint by stating that Lucasfilm had delayed considerably in bringing its action but this attempt was rebutted since delay alone was not sufficient grounds to deny a complainant the enforcement of its rights. Abscissa also claimed that Disney wouldn’t have acted had Nominet not introduced the shorter .uk domain extension in 2014. They proposed to transfer the .uk domains to Disney on the condition Abscissa can keep selling Star Wars merchandise on starwars.co.uk and star-wars.co.uk domains. Disney turned down this offer and after a three-month process, Nominet ruled in Disney’s favor and forced the handover.


"Star Wars cannot sensibly refer to anyone else other than the complainant," wrote Nominet's expert Steve Ormand, “It is highly likely in my view that any user searching for Star Wars and arriving at the respondent's website will have suffered initial interest, confusion and falsely inferred a commercial connection with the complainant.”


Disney has previously used this service to seize WaltDisney.co.uk and DisneyCruises.co.uk from other parties. It seems that it was obvious from the start that Abscissa will lose this case and that the force is with Disney and Lucasfilm.


We hope the above was of interest and use to you. Feel free to book a free consultation using the form below if you have any brand and naming related questions, we are always happy to hear from you.


MarkUpgrade Team 


Sources:

https://www.bbc.com/

https://www.growthbusiness.co.uk

https://www.mirror.co.uk

https://www.trademarksandbrandsonline.com

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