When Disney acquired Lucas Films they also got Star Wars (obviously). And Disney have a track record of being quite protective of their brand.
So it’s not very surprising that they would want to get control of the co.uk domain name. Starwars.co.uk has been registered since 2003. The current holder is Abscissa.Com Limited, a UK company, that apparently started life in software consultancy, but over time morphed into selling fancy dress costumes and practical jokes:
Abscissa.Com Limited was incorporated in September 2001 as a specialist Internet Security consultancy. However in the summer of 2002, tables started to turn as a hobby and pastime website spawned orders of practical jokes and fancy dress costumes with turnover in the last three months of 2002 amounting to £43K. Today we are a multi-million pound retail and wholesale company with UK and European distribution rights to many American Halloween costume manufacturers and a number of Licensed products.
Lucasfilm Ltd., LLC took a Nominet dispute (DRS D00015788) against Abscissa and prevailed.
The complaint from LucasFilm is fairly predictable. The company owns multiple trademarks in multiple territories and that is not something that anyone could challenge. The current registrant not only has the domain (and others) that use the term “star wars” or a variation on it, but is currently pointing the domain to a section of their site where they are selling Star Wars themed goods:
In the complaint section of the decision Disney outline how they had written to the registrant and that subsequently the registrant registered more domain names including their trademarks:
The Complainant notes that those Domain Names registered on 25 July 2014 (2014 Domain Names) were registered very shortly after the Complainant wrote to the Respondent (on 12 June 2014) to put the Respondent on notice of the Complainant’s rights and to demand the transfer of the Domain Names which were registered by the Respondent in 2003 (2003 Domain Names). The registration of the 2014 Domain Names, says the Complainant, in the face of the Complainant’s prior objection, represents a clear intention on the part of the Respondent to acquire those Domain Names as blocking registrations against a name or mark in which the Complainant has rights and to unfairly disrupt the Complainant’s business.
It’s worth reading the entire decision, as there’s some interesting back and forth about whether or not the registrations were “abusive” or not as well as some interesting rationales being presented by both sides.
The story was also picked up by the mainstream media (Hat tip Andrew Bennett)
