Lucasfilm wins UDRP for two TM-infringing domain names

It still amazes me that people think that they can register domains with long-held Trademarks and get away with it. Yes, in some cases people just don’t know that you can’t register domain names with Trademarks in them…but in many cases they do and just want to see if they can get away with it. Well in the case of Lucasfilm, if you register a domain name with the words “star wars” in it, expect to be hearing from their lawyers.

Recently the company went after two domains and won in a single panelist UDRP. While I think anyone would lose these names regardless of how many panelists there were, a single panelist UDRP can very easily go poorly for domain owners, TM squatters or not.

The registrant, Ben Clark, was accused of controlling the domains to prevent Disney from “reflecting its mark in corresponding domain names”.

According to Disney and Lucasfilm, Clark was intentionally attempting to gain internet traffic for commercial gain.

Sole panellist Charles Kuechenmeister ruled in favour of Disney and Lucasfilm, agreeing that the domains were registered in bad faith and that they were confusingly similar to Disney trademarks. (Source – FanthaTracks)

I’ve given many warnings on my blog about the dangers of registering domains that infringe on Trademarks. In some cases you might not know there is a trademark but if you’re registering a domain name with “star wars” in it, or “Microsoft” or “Facebook” or anything else that you know is Trademarked, don’t be surprised when they come to claim their domains.

{ 2 comments… add one }

  • Ravi January 10, 2019, 3:08 am

    Disney is in aggressive mode for capturing good portion of online streaming market..

    Very soon their own streaming service starts..and star wars is a big fat franchise which brings they definitely will defend it.

    Of course all the above mentioned is unnecessary…
    Simple don’t register TMs and Patents… 🙂

  • Robert January 10, 2019, 5:05 am

    Yep, very silly to register blatant trademarked names like this. In cases like this, the UDRP system works. It’s just a shame when the UDRP system doesn’t work, like with generic/geographic domains from bias panelists. If you’re a domain investor, ensure you stick to generic/geographic domains and ALWAYS defend against UDRPs by pushing for three panelists.


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