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Branson wins right to own porn web address featuring his name

An Australian man has been ordered to transfer his ownership of the richardbranson.xxx domain name to UK entrepreneur Richard Branson.22 Feb 2012

The National Arbitration Forum (NAF) said Branson owned trade mark rights for the name 'Richard Branson' and that Sean Truman, who had bought the name, did not hold any rights or legitimate interests to the domain name himself.

The dispute resolution service also said Truman had "registered and used the name in bad faith".

Under the EU's Trade Mark Directive and Community Trade Mark Regulations, trade mark owners can prevent competitors from "using in the course of trade any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered" without their consent.

The Directive also permits EU member states to draw up national laws giving extra protection to trade mark owners who possess a reputation in that country if others' use of similar or identical signs for similar or identical purposes "without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark".

In the UK, trade mark protection can be obtained by registering signs with the Trade Marks Registry at the UK's Intellectual Property Office. Under the Trade Marks Act "any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings" can be registered subject to certain conditions. The Act states that marks cannot be registered if they are "devoid of any distinctive character" or if an application is made in "bad faith".

Mark owners may also obtain 'goodwill' rights to unregistered marks giving them legal protection under the laws of 'passing off'. If mark owners can prove that their use of a trade mark has established 'goodwill' in the business associated with that trade mark protection to that mark may apply. Goodwill is essentially a reputation in the mark. If another trader 'passes off' their services as being those of mark owners and appear to claim that their services are theirs or that they are in some way connected or have been endorsed, then mark owners can take action.

The Internet Corporation for Assigned Names and Numbers (ICANN) first started selling .xxx domain names last year despite concerns expressed by its Government Advisory Committee (GAC) – the body created to alert ICANN to the view of governments. The ability to register .xxx domains is open only to companies involved in the business of pornography.

ICANN has used NAF's dispute resolution services to determine the outcome of more than 17,000 domain name disputes since 1999. NAF does so according to policy rules set by ICANN.

Truman had bought the richardbranson.xxx domain name in December and used the site as a "parking page with links to adult entertainment related websites". However, NAF ordered him to transfer ownership of the domain name to Branson after the entrepreneur complained.

NAF said "evidence" Branson had provided showed he had established rights "in his name and mark, Richard Branson". Branson had said that the reputation he had built up publicly entitled him to assert rights over his name and that he had also registered domain names containing his name. He therefore argued that "the disputed domain name is identical or confusingly similar to an unregistered trademark or service mark in which [he] has rights," according to the ruling

Truman had argued that, although Branson was famous, the name 'Richard Branson' was "neither unique nor unusual" and that in fact Branson's success was more reliant on the Virgin brand than his own name. He also said that Branson had no registered rights to the name and that he had registered the domain name only after Branson had had "ample opportunity" to do so himself. However, NAF nevertheless determined that Branson had established rights to his name.

"[Branson's] evidence is sufficient to establish secondary meaning and common law trademark rights in his name and mark, RICHARD BRANSON," NAF said.

"[Truman's] domain name is identical to [Branson's] RICHARD BRANSON mark. The domain name contains [Branson's] entire mark, while merely omitting the space between the mark's component terms and adding the top-level domain '.xxx.'  The omission of a space and addition of gTLDs (generic top-level domains) such as '.com' or '.net,' and here the sTLD (sponsored top-level domains) '.xxx,' are irrelevant in differentiating a domain from [Branson's] mark for the purposes of [ICANN] policy," it said.

Even though Branson had established rights to his name Truman could still hold onto the domain name he had bought if he had rights or legitimate interests to the name himself. NAF ruled that he did not.

"[Truman] claims that he has no plans to commercialize or otherwise directly use the domain name outside of holding it as a souvenir," it said. "The use of a domain name as a souvenir does not constitute a legitimate noncommercial or fair use of the domain name [under ICANN policy]".

"Even if [Branson] had failed to make out a prima facie case, [Truman] impliedly admits in his papers that he has no rights in the domain name.  [Truman] states that he is not involved in the sex or pornography industry, and that he does not have connections with that industry. Absent any industry connection or involvement, [Truman] cannot be a member of the relevant 'sponsored community' and is ineligible to register any domain name on the .XXX registry except perhaps to protect rights in his own mark, if at all," NAF ruled.

The fact that Truman only held the domain name as a "souvenir" and because he knew of Branson's fame when he registered the name showed that Truman had registered and used the name in bad faith, NAF ruled.

"Significantly, [Truman] admits that he was aware of [Branson's] notoriety and celebrity at the time he registered the at-issue domain name. [Truman] also impliedly admits that he registered the domain because of [Branson's] notoriety and celebrity rather than in spite of it, albeit out of admiration rather than contempt. Under the present set of operative facts, these admissions indicate that the at-issue domain name was registered and is used in bad faith," NAF said.

"[Truman] should have recognized that his registration and control of 'richardbranson.xxx' would serve to vex or embarrass [Branson]. Registering and holding a .XXX domain name identical to [Branson's] mark without having any rights or interests therein is evidence of bad faith registration and use under [ICANN's rules]. As an additional independent ground demonstrating bad faith ... [Truman] apparently registered the at-issue domain name even though he does not qualify to register a domain name on the .XXX register. As such, Respondent was ineligible ... to register any .XXX domain name," it said.

An application was made for the registration of "RICHARD BRANSON" as a Community trade mark on 26 January, according to the UK Intellectual Property Office.