A recent decision from the National Arbitration Forum demonstrates how Sir Richard Branson was caught out and embarrassed when a new Sponsored Top Level Domain (“sTLD”) was registered along with his name. sTLD’s are a select domains that have been applied for by sponsors and released by the Internet Corporation for Assigned Names and Numbers (“ICANN”).
Mr. Sean Truman, located in Australia, registered the domain name “www.richardbranson.xxx” (the “Domain Name”) a few days after it became available for public registration on December 10, 2011. The sTLD “.xxx” is associated with the adult industry. Sir Richard Branson, upon finding out about the registration filed a complaint with the National Arbitration Forum.
Mr. Truman alleged that he was not involved in the adult industry, but had simply registered the Domain Name as a ‘souvenir’. However, Sir Richard Branson was able to prove the required elements of the ICANN Dispute Resolution Policy, in particular he was able to prove that he holds the common law trademark rights in his name. Subsequently, the National Arbitration Forum decision transferred the Domain Name to Sir Richard.
Since the “.xxx” domains were introduced in late 2011, there has only been one other complaint filed with The National Arbitration Forum regarding registration of a “.xxx” domain, but it is likely to become increasingly common as domain name squatters register the names of high profile individuals along with the “.xxx” sTLD.
This new sTLD domain poses a real risk to businesses and individuals that can have their reputation tarnished by a third party registering their name along with “.xxx”. Sir. Richard Branson was able to get control over the Domain Name because he was able to prove that he had common law trademark rights in his name. It will be difficult for many people to be successful with such an argument.
One way to try and protect yourself or your business, is to register any embarrassing sTLD domains yourself. Although generally you must be a member of the ‘adult industry community’ in order to register a “.xxx” domain name, they also accept registrations from non-members who wish to protect their intellectual property.
Should you have any domain name or trademark issues we would be happy to assist you.