'Sex.biz' transferred to SEX trademark owner

In Marcus R Schatte v Personal, National Arbitration Forum panellist Irving H Perluss has ordered the transfer of 'sex.biz' to Schatte. Perluss held, among other things, that the domain name was identical to Schatte's registered SEX mark. The decision has caused controversy because critics argue that 'sex' is a generic term, so it is unfair to grant an individual trademark rights in it.

Schatte owns several US trademark registrations for SEX for various educational materials in the field of human sexuality and sexually transmitted diseases. Personal registered 'sex.biz' in March 2002 and was notified of Schatte's trademark rights at that time. Nevertheless, Personal continued with the registration. Schatte then filed a complaint under the Start-up Trademark Opposition Policy (STOP).

Perluss ordered the transfer of the disputed domain name, concluding that the complaint met the three criteria set out in Paragraph 4 of STOP:

  • 'sex.biz' was identical to Schatte's registered trademark;

  • Personal had no legitimate interest in the domain name; and

  • Personal's prior knowledge of Schatte's trademark rights meant that there was an almost irrefutable presumption that it had registered the domain in bad faith.

Russell Falconer, Baker Botts LLP, New York

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