Disney wins Star Wars domain name court case battle against UK costume shop

Disney has forced a costume shop to hand over a handful of domain names which were using the Star Wars name after a legal battle ruled in their favour.

The fancy-dress shop in Berkshire had been using the starwars.co.uk domain for more than a decade as well as a host of other variations it had registered such as star-wars.co.uk, star-wars.uk and starwars.uk.

The domains all redirected people to a section of the Jokers' Masquerade web store, hosted at joke.co.uk, where the company sells Star Wars-themed costumes.

Disney asked the costume store's parent company Absciss to hand over the domains last year however it refused forcing Disney to take legal action with the UK domains regulator, Nominet, ruling the company to hand over the domains to Disney.

Nominet's expert Steve Ormand oversaw the case and decided: "The name Star Wars cannot sensibly refer to anyone else other than the Complainant. It is a unique term coined by the Complainant for the purposes of a science fiction film released in 1977 and enhanced as further films have been released."

He said that users searching for Star Wars “will have suffered initial interest confusion and falsely inferred a commercial connection with the Complainant” upon arriving at the costume site.

He added that “the respondent has taken advantage of the 'pulling power' of the name Star Wars to attract users to its website."

Abscissa’s chief executive Mark Lewis told BBC News that the complaint arose because of the upcoming Star Wars film, Star Wars: The Force Awakens in December 2015. He said that "if the new Star Wars films by Disney were not being released, we wouldn't be having this discussion,"

"They wanted the starwars.uk domain, they haven't [got it], and in essence they've thrown their teddies out of the pram. That's how we feel. Are we disappointed? Yes. Are we surprised? Not necessarily."

Absciss has until 20 July to appeal the decision by which time the domains will be transferred to Lucasfilm, which was acquired by Disney in 2012 for $4.06bn.