SpaceX’s cybersquatting challenge fails.
SpaceX has lost a cybersquatting challenge against a company in Mexico that registered the domain name starlinkmx.com.
StarGroup is a company that offers telecommunications and entertainment services in Mexico. It was established 60 years ago and has several brand names including Star TV, Star Go, Star Line and Star Group.
The company applied for trademarks in Mexico for Starlink for communications starting in 2015. This was about the time that SpaceX announced plans for its satellite service, although it does not appear SpaceX began using the Starlink name back then.
In November 2017, SpaceX legal representatives contacted StarGroup, initially not naming its client, to see if StarGroup would sell its Star Line and Starlink marks. StarGroup said it was concerned that the prospective purchaser might offer competing services. At that point, SpaceX’s lawyers revealed their client and explained that “SPACEX is dedicated to […] fabricate, and launch rockets […] to outer space to evolve the space technology with the final purpose of people being able to habitat other planets in the future” and that therefore “[…] the services offered by SPACEX are not competing by the ones offered by STARGROUP” (translated from Spanish).
This was an odd claim for SpaceX’s lawyers to make, given that it wanted the brand for an internet access service.
StarGroup registered starlinkmx.com in 2018 during the back and forth with SpaceX’s lawyers.
The two parties have fought over the trademarks since then, and one of StarGroup’s marks was later invalidated.
Fast forward to this year, and SpaceX filed a cybersquatting challenge against starlinkmx.com with World Intellectual Property Organization (WIPO).
In finding for StarGroup, the WIPO panel noted that the company’s brand name starts with star, and it has a history of naming products that start with star. The panel also pointed out that StarGroup applied for trademarks in 2015, which predates SpaceX’s intentions to use the mark (at least that were publicly known at the time).
The panel found that SpaceX did not show that StarGroup lacked rights or legitimate interests in the domain and did not show that StarGroup registered the domain in bad faith.