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Marcus Schatte owns sex and doesn’t want anyone to forget it. The Houston man has been trying to prevent a businessman in Korea from using the sex.biz domain name. Schatte trademarked the word for several products he’s developed and argued that he should have the Internet address as well. Though many intellectual property rights experts say that’s a stretch, an arbitrator thought Schatte had a good point. Last November, he gave Schatte the right to have sex — as a domain name. “Although the mark SEX may be generic, [Schatte] demonstrated to the United States Patent and Trademark Office that there is a distinctive, unique or secondary meaning to the mark and was granted full registration,” wrote Irving Perluss, the arbitrator. He issued the decision through the so-called Start-up Trademark Opposition Policy, which handles disputes relating to new top-level domains such as .biz. Despite the titillating nature of the trademark in question, attorneys say they were surprised that Schatte was given leeway to use his “sex” trademark to get a valuable piece of Internet real estate. “The problem is that the panel said that if you have a trademark, you must have the right to preclude any use of the domain name,” says Mark Lemley, an intellectual property professor at UC Berkeley’s Boalt Hall School of Law. Lemley says there are many cases in which a common word is trademarked, such as “apple” for computers or “guess” for jeans. In such situations, he says, “You don’t get to own the word, but to prevent others from selling similar goods using the word.” Schatte trademarked “sex” for a line of refrigerator magnets and “educational materials in the fields of human sexuality and sexually transmitted diseases via audio, visual and printed media, and online via a global computer network,” according to Perluss’ opinion. J. Thomas McCarthy, a professor at the University of San Francisco School of Law and author of a well-known treatise on trademark law, views Perluss’ opinion as upholding “a very expansive use of trademark rights.” Domain names are generally issued on a first-come basis as long as the person has a legitimate right to it, says McCarthy. Perluss concluded that the original owner of sex.biz � a Korean businessman named Osan-si Kyounggi-do � did not have a legitimate claim to the domain name. He cited the owner’s lack of a trademark or service mark identical to the domain name and the lack of evidence that the owner intended to use the name to offer goods or services. By contrast, he said, Schatte intends to use the domain name “for bona fide business purposes on the Internet.” Lemley says he was also troubled by the judge’s decision that the original registrant acted in bad faith since he should have known someone else had a “sex” trademark. There was “no evidence” of that, adds Lemley. Schatte’s case is not the first one in which “sex” has caused domain name dysfunction. A legal battle settled in 2001 over the sex.com domain name. That case involved the theft of the domain name from the original owner, who was first to register it. The current case, however, touched on the rights a trademark confers.

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