Richard Branson v. Sean Truman
Claim Number: FA1201001423689
Complainant is Richard Branson (“Complainant”), Great Britain. Respondent is Sean Truman (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <richardbranson.xxx>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 10, 2012; the National Arbitration Forum received payment on January 10, 2012.
On January 10, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <richardbranson.xxx> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 11, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 31, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to email@example.com. Also on January 11, 2012, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on January 30, 2012.
On January 31, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends as follows:
Complainant has rights in the Richard Branson mark by virtue of the facts that (1) the term is Complainant’s personal name, and (2) Complainant has made long, exclusive and continuous use of the mark in commerce over the past three decades and longer.
The Complainant also hosts a popular blog on the Virgin.com website (“Richard’s Blog”). The Complainant, through Virgin Enterprises Ltd., has registered the domain names <richardbranson.com> and <richardbranson.co.uk> and redirects them to the home page for Virgin Group, <virgin.com>, where the Complainant’s blog and other information is hosted.
The disputed domain name is identical or confusingly similar to an unregistered trademark or service mark in which the Complainant has rights.
Complainant’s numerous usages of the term ”Richard Branson“ provide evidence that Complainant is a public figure and that such public recognition proves the secondary meaning that Complainant enjoys, in both his name and surname, which is sufficient to establish common law trademark rights in Complainant’s name and surname.
Complainant has common law rights in the RICHARD BRANSON mark, which is also Complainant’s personal name. Complainant is a famous celebrity who also uses the RICHARD BRANSON mark in connection with the marketing of commercial products/services, charitable services, published works, and public speaking services. Complainant presents substantial evidence of extensive and continuous use of the mark in commerce and argues that as a result of such exposure, consumers have come to associate the mark with Complainant as to the source of the goods.
When comparing the disputed domain name to Complainant’s Mark, the relevant comparison to be made is between only the second-level portion of the disputed domain name and the Complainant’s Mark. The disputed domain name <richardbranson.xxx> contains the entirety of Complainant’s Mark without modification, resulting in a word that has an identical, and confusingly similar, sight, sound, and meaning as Complainant’s Mark.
Complainant's name and mark, RICHARD BRANSON, is the first natural result of searches on all the major search engines—Google, Yahoo, and Bing—using "RICHARD BRANSON" as the search term. Additionally, when searching “RICHARD BRANSON” at <Wikipedia.org>, a user is taken directly to a page dedicated to Sir Richard Charles Nicholas Branson, implying there are no other
“RICHARD BRANSON” results to display.
Respondent has no rights or legitimate interests in respect of the disputed domain name for the following reasons:
[i]. Respondent has not been commonly known by the disputed domain name. Respondent is not sponsored by or affiliated with Complainant in any way.
[iii]. Complainant has not given Respondent permission to use Complainant’s Mark in a domain name.
[iv]. The Respondent is using the disputed domain name to redirect Internet users to a website featuring generic links to third-party websites, some of which directly promote adult content. Presumably, Respondent receives pay-per-click fees from these linked websites. As such, the Respondent is not using the domain name to provide a bona fide offering of goods or services as allowed under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use as allowed under Policy ¶ 4(c)(iii).
[v]. Respondent registered the disputed domain name on December 10, 2011, which is significantly after Complainant’s registration of <richardbranson.com> on September 10, 1998.
[vi]. When a registrant selects a domain name that “gives rise to the impression of an association with the Complainant,” it is neither a bona fide offering of goods or services, or a legitimate noncommercial or fair use pursuant to paragraphs 4(c)(i) and (iii) of the Policy.
The domain name should be considered as having been registered and being used in bad faith for the following reasons (UDRP Rule 3(b)(ix)(3); UDRP Policy ¶ 4(a)(iii)):
[i]. The Complainant’s name, RICHARD BRANSON, is well recognized, and Complainant has marketed and sold services using his name since the early 1970s. Complainant has owned the <richardbranson.com> domain name since 1998. Thus, it is “not possible to conceive of a plausible situation in which the Respondent would have been unaware of” the Complainant’s brands at the time the Domain Name was registered.
The selection of a Domain Name by the Respondent that is so obviously connected with such a well-known name and service by someone with no connection suggests opportunistic bad faith.
The Respondent is using the disputed domain name to redirect unsuspecting Internet users to a website featuring advertising links to adult websites and presumably receiving pay-per-click fees in the process. The Respondent is using the fame of the Complainant’s mark improperly to increase traffic to the website listed at the Domain Name for commercial gain. Such conduct constitutes bad faith.
Respondent contends as follows:
Respondent acknowledges that Richard Branson is a well-known identity but asserts that such name is neither unique nor unusual. Complainant’s currently registered “.com” and “.net” domain names do not in themselves resolve to a unique website devoted to the individual but actually divert to the Virgin Corporation websites which are the essence of his brand, and as such, the complainant does not rely on his name as his trademark but rather the corporate empire that he controls. There is no registered trademark or service mark under the name RICHARD BRANSON. The availability of the .XXX domain name was publicly known well before being registered by the respondent and it is not conceivable that a person with the resources available to Mr. Branson that he, or his corporation, could not have foreseen the potential for any person to register the domain name in dispute under the provisions for registration of this name. The complainant had ample opportunity to register the name if he believed that his rights may be under threat by another person registering the name. It has been stated that the respondent registered the domain name on December 10th 2011. This is 4 days after the .XXX domain names were open to the public. The .XXX was not registered prior to this date although there was ample time to do so.
The .XXX could have been registered during either of these periods or even in the first 4 days it was open to the public. Instead it was left unregistered. Respondent then registered an available domain name. It was more than thirty days after the domain name was registered that Mr. Branson lodged the complaint and now believes he is entitled to the name.
Legitimate interest in the domain name. At no time has the complainant sought to investigate the motives of Respondent in registering the domain name, but has assumed that there is an intent which would be detrimental to the complainant. Respondent holds Mr. Branson and his various commercial achievements in the highest regard and does not seek to do harm to Mr. Branson or in any way damage his reputation. Mr. Branson's name and image are commonly used by a wide variety of print and other media as a means of strengthening their sales and generating profit without Mr. Branson taking action against them as he is aware that their actions in bringing attention to him are to his benefit. Mr. Branson has made extensive use of the media to effectively market his Virgin Corporation business without taking action against those that have used his name. Without knowing the purpose of this domain name registration and making reasonable investigations in that regard, Mr. Branson has acted prematurely in talking this action. Mr. Branson has a history of using the "sex sells" principal in his business activities, using the term "Virgin" as his generic brand name, and yet he has difficulty with the registration of an .xxx domain name because of the potential for it to be used in marketing within the sex industry. The respondent is not involved in the sex or pornography industry and does not have connections with this industry. The respondent's intention in registering the name was to hold as a souvenir the rights to a name which holds significance to him in admiration of Mr. Branson. The domain name is in effect a souvenir, and the respondent has no plans or intentions to host a website using the name.
Bad Faith usage of the disputed domain name. Mr. Branson has indicated that he believes that Respondent has established a website which contains links and advertising that are detrimental to his name and that he believes that the respondent is receiving income from the site in a pay by click manner and is therefore acting in bad faith. Respondent has not taken over control of the domain name since its registration, and all content currently displayed on the resolving website has been created and posted by godaddy.com. The respondent is not receiving any income at all from this site and has no control over this content. The locking of access to the domain caused by the lodgment of this complaint has prevented the respondent from taking control of the domain name and removing these advertisements. If resolved in Respondent’s favor, he will take control of the domain and remove all links to sexually explicit sites or other content which could be construed as damaging to the name or reputation of all persons who carry the name Richard Branson, be they the complainant, or other persons of that name. As previously stated, the respondent holds the domain name registration as a souvenir and will not be using it for any form of commercial operation which could give rise to the perception of bad faith usage of the name. Rule 3(b)(ix)(3); UDRP ¶4(a)(iii).
Complainant Richard Branson is a celebrity and his name is widely recognized.
Complainant has trademark rights in RICHARD BRANSON.
Complainant does not provide Online Adult Entertainment, Represent Providers, or Provide products or services to Providers and Representatives.
Respondent does not provide Online Adult Entertainment, Represent Providers, or Provide products or services to Providers and Representatives.
Respondent has no business relation or connection to Complainant.
Respondent registered the at-issue domain name because of Complainant’s celebrity.
The domain name resolves to a parking page with links to adult entertainment related websites.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has an interest in a mark which is identical to the at-issue domain name.
The Panel finds that Complainant’s evidence is sufficient to establish secondary meaning and common law trademark rights in his name and mark, RICHARD BRANSON. Thus, Complainant has established rights under Policy ¶ 4(a)(i). See James v. Demand Domains, FA 1106240 (Nat. Arb. Forum Dec. 27, 2007) (“The AMI JAMES mark has become distinct through Complainant’s use and exposure of the mark in the marketplace and through use of the mark in connection with Complainant’s television show, clothing line, and tattoo shop for over seventeen years.”); see also Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000) (finding that trademark registration was not necessary and that the name “Julia Roberts” has sufficient secondary association with the complainant that common law trademark rights exist). Demonstrating common law trademark rights is sufficient for a complainant to establish rights in a mark for the purposes of Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Respondent’s domain name is identical to Complainant’s RICHARD BRANSON mark. The domain name contains Complainant’s entire mark, while merely omitting the space between the mark’s component terms and adding the top-level domain (“TLD”) “.xxx.” The omission of a space and addition of gTLDs such as “.com” or “.net,” and here the sTLD “.xxx,” are irrelevant in differentiating a domain from a complainant’s mark for the purposes of Policy ¶4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark).
Respondent lacks rights and interests in respect of the at-issue domain name.
Under Policy ¶4(a)(ii), Complainant must first make out a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name. The threshold for such showing is low. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005). Once a prima facie case is established, the burden then, in effect, shifts to Respondent who must demonstrate that he nevertheless has rights or legitimate interests in respect of the domain name. Complainant contends that he never authorized Respondent to incorporate his name and mark in a domain name and that Respondent is not sponsored by or affiliated with Complainant in any way. Complainant also claims that WHOIS information identifies Respondent “Sean Truman” as the registrant of the at-issue domain name. Therefore, Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii). Complainant thus carries his initial burden. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
There is no evidence of any of the Policy ¶4(c) conditions demonstrating rights and interests. Respondent claims that he has no plans to commercialize or otherwise directly use the domain name outside of holding it as a souvenir. Therefore Respondent cannot prove or even truthfully allege rights and interests pursuant to Policy ¶4(c)(i). As discussed above, paragraph 4(c)(ii) is also inapplicable because Respondent is not commonly known by the domain name. Likewise, the Panel finds that the use of a domain name as a souvenir does not constitute a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii).
Disputes concerning .XXX sTLD domain names may be brought under either the Rapid Evaluation Service Policy (RES), or the Charter Eligibility Resolution Policy (CEDRP) or as in the instant case, the Uniform Domain Name Dispute Resolution Policy (UDRP). However, both RES and CEDRP allow for their consideration in deciding a .XXX domain name dispute pursuant to the UDRP. See RES ¶8, CEDRP ¶7,8. The RES policy at paragraph 3(b) sets out conditions which if shown shall demonstrate Respondent’s rights and interests in respect of the disputed domain name. The Panel finds that there is no evidence of any of those conditions being present in the instant case.
Even if Complainant had failed to make out a prima facie case, Respondent impliedly admits in his papers that he has no rights in the domain name. Respondent 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, Respondent 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. Respondent’s registration and use of <richardbranson.com> domain name is thus inconsistent with Community Eligibility requirements pursuant to CEDRP ¶ 2(a) and otherwise. Respondent’s ineligibility to register a .XXX domain name demonstrates his lack of rights and interests in the disputed domain name.
The domain name was registered and used in bad faith.
Respondent avers that he has not made an active use of the at-issue domain name and has merely parked the domain name with no plans for future use; as discussed elsewhere herein, Respondent claims the domain name is held merely as a souvenir. Such planned non-use of a domain name that is identical to Complainant’s mark is evidence that Respondent registered and uses the domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). Significantly, Respondent admits that he was aware of Complainant’s notoriety and celebrity at the time he registered the at-issue domain name. Respondent also impliedly admits that he registered the domain because of Complainant’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 under Policy ¶ 4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
The Policy’s several enumerated indicia of bad faith under paragraph 4(b) are “without limitation.” While on the one hand Respondent submits that the name RICHARD BRANSON is not unique or unusual, Respondent nevertheless registered the domain because of Complaint’s notoriety. Respondent should have recognized that his registration and control of <richardbranson.xxx> would serve to vex or embarrass Complainant. Registering and holding a .XXX domain name identical to Complainant’s mark without having any rights or interests therein is evidence of bad faith registration and use under Policy ¶4(a)(iii).
As an additional independent ground demonstrating bad faith and as discussed above with regard to “rights and interests,” Respondent 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 ab initio to register any .XXX domain name. See Baseline Policies, International Foundation for Online Responsibility Registration, (iffor.org/baseline-policies February 7, 2012). See also CEDRP ¶ 2(a) (allowing for transfer of the domain name from Respondent when a .XXX TLD domain name “has not been registered in compliance with the Sponsored Community eligibility criteria….”). Respondent’s defiance of the applicable .XXX sTLD registration eligibility requirements further demonstrates Respondent’s bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that the <richardbranson.xxx> domain name should be TRANSFERRED TO COMPLAINANT subject to the .XXX sTLD’s Sponsored Community eligibility criteria requirements and the general registration requirements of domain names in the .XXX sTLD.
Paul M. DeCicco, Panelist
Dated: February 14, 2012
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