SEX.BIZ registrant gets screwed by STOP

**dtobias** · 11-07-2002, 01:27 PM

In the latest entry in the contest for "Worst Domain Dispute Decision Ever", a NAF panelist has awarded sex.biz to a challenger due to U.S. trademarks issued within the last year in the subject matter of refrigerator magnets. The panelist in this case was retired judge Irving H. Perluss, which surprised me because I felt his past decisions, such as that in pueblo.org, were pretty clueful. Now he's decided that a recently-granted trademark to a highly generic word, in a very specific category, was sufficient to allow a global monopoly on use of that word in domain names for any purpose. No evidence whatsoever was presented to indicate that the respondent registered the name in order to target the complainant in any way, other than the usual hand-waving about how the existence of an IP claim made the registration inherently bad-faith.

I certainly hope the registrant intends on pursuing this matter further in court.

When somebody yells "STOP!" and then gets sex, isn't that known as rape?

sex.biz decision:
http://www.arbforum.com/domains/decisions/124756.htm

pueblo.org decision:
http://www.arbforum.com/domains/decisions/95250.htm

**jberryhill** · 11-07-2002, 01:51 PM

I agree that Perluss has demonstrated a record of relatively clueful opinions. His footnote [1] demonstrates a profound misunderstanding of what the term "generic" means. He is correct that "sex" is not a generic term for refrigerator magnets, and the TM registration attests to that fact.

He misses the point entirely that "sex" is the generic term for something else, though, and the use of "sex" for that something else is permissible regardless of any arbitrary goods or services for which "sex" may be distinctive.

I have a five dollar bill in my pocket that says, a few months from now sex.biz is not going to be in use for selling refrigerator magnets.

The really sad thing about how some of the STOP decisions have come out, is that some of the panelists have no idea how the IP claim service worked and why it was structured the way it was. The entire idea of allowing a claim service, but also allowing anyone to register the domains, was a recognition that some trademark terms may have valid concurrent uses as just plain words, or as trademarks for unrelated goods.

Perluss just left my "clued panelist" roster.

**GeorgeK** · 11-07-2002, 02:26 PM

Also, the process was in English, whereas the Respondent requested it be in Korean. Since the Registrar (gambia.com) was a Korean one, weren't they fully within their rights to demand that it be in Korean?

**Drewbert** · 11-07-2002, 04:09 PM

>Since the Registrar (gambia.com) was a Korean one, weren't they fully within their rights to demand that it be in Korean?

Not sure about .biz (I think that TLD sucks) but with CNO, it's the language of the Registrar's website that counts. IIRC.

And this case clearly ranks right up there with bodacious-tatas.org in the stupidity rankings.

**pljones** · 11-07-2002, 04:35 PM

Dan and all,

I agree this decision was clearly wrong. I also think it is possible this complainant already lost once back in July in NAF Case 112547 and somehow managed to get a second chance with different information. Perhaps the registrant should look to the Eastern District of Virginia in STOPping this bad decision.

On the language issue, I believe that all 318 NAF STOP decisions were issued in English. WIPO issued 35 STOP decisions in either Korean or Chinese. I wish that WIPO would publish a translation of decisions in an alternate language (it doesn't always have to be English), especially if one of the parties was from an English-speaking country. Decisions issued in Korean or Japanese become useless to respondents and complainants from places other than Korea or Japan. Just my thoughts though.

mike · 11-08-2002, 05:40 AM

Deleted accidental double-posting of my post below.

mike · 11-08-2002, 05:52 AM

[QUOTE]Originally posted by dtobias

[B]In the latest entry in the contest for "Worst Domain Dispute Decision Ever", a NAF panelist has awarded sex.biz to a challenger due to U.S. trademarks issued within the last year in the subject matter of refrigerator magnets.

***Just when I thought we've seen it all in this industry, I find out "We ain't seen nothin' yet" of what's to come from ICANN's version of "Taking care of bizness" for the TM lobby!!!
This case would make for a great script of a very scary episode of 'The Twilight Zone' on the "Domainers Television Network (DTN)", if there were such a thing.

Irving H. Perluss has decided that a recently-granted trademark to a highly generic word, in a very specific category, was sufficient to allow a global monopoly on use of that word in domain names for any purpose.

***I don't know where to begin with this nightmare! How about I wish Perluss had used his brain in deciding this case? Or, What mechanism is out there to remove incompetent judges? Or, how long will it be before TM terrorists(TMT's) start citing the sex.biz case as precedence when they are hijacking names? I obviously have more questions than answers about Perluss's conclusions and decision.

No evidence whatsoever was presented to indicate that the respondent registered the name in order to target the complainant in any way, other than the usual hand-waving about how the existence of an IP claim made the registration inherently bad-faith.

***I knew the "Bad Faith" clause was "Bad Law" when I first read it back in '99. It enables the TM lobby to abuse the rights of and prevent new business startups in America and abroad. Maybe Bush's 'Corporate Corruption Police' will get here soon to clean this mess up!

I certainly hope the registrant intends on pursuing this matter further in court.

***The only way hijackings like this are going to stop is if lawyers representing the victims, like the respondant in this case, countersue and win substantive compensatory and punitive judgements against the complainants and ICANN, as well as the U.S. DOC, the DOJ, NSI, the TM lobby, etc...for the pain/suffering and possible heart attack/stroke their actions or inactions caused the respondant to suffer.

When somebody yells "STOP!" and then gets sex, isn't that known as rape?

***Yes it is! Read the sordid details again via the link below

sex.biz decision:
http://www.arbforum.com/domains/decisions/124756.htm

**mole** · 11-08-2002, 06:27 AM

hmmm... a name worth fighting, cheating, clawing for if anything for vanity value by a Pornlord.

**DnPowerful** · 11-08-2002, 06:53 AM

This is a truly stunning decision.

An embarassment to the process in every respect.

**pljones** · 11-08-2002, 08:19 AM

First of all this decision has nothing to do with the "TM Lobby," it has to do with an individual or group gaming the system to take a name that is by all accounts the most valuable, bankable .biz domain name. The Panelist's wrong interpretation of STOP didn't help any either.

Back in the July Sex.biz decision, the panel failed to address the issue of bad faith, but he had a lot to say about the Complainant's trademark rights in the word "sex": see "Complainant contends that he holds a trademark or service registration with the United States Patent and Trademark Office for the mark, SEX.BIZ. This bare allegation is not supported by copies of a trademark registration or application for a trademark. No evidence is presented by Complainant that he has operated under the mark at any time. Complainantâ€™s terse and incomplete Complaint contained absolutely no evidence of any kind to support the bare contentions noted above."

So in the latest case, the complainant made sure he provided copies of tm registrations, but all were issued AFTER the IP Claim process was introduced. I am wrong in assuming that these "marks" did not meet the requirements of the IP Claim process? It seems that in order to have an IP Claim, you had to have a registration all of the registrations in the sex.biz case were issued after the IP Claim period ended.

Regardless, there is no way the registrant could have obtained sex.biz in bad faith. From the beginning of when the .biz TLD was announced, everyone knew that one of the most popular domain names was going to be sex.biz. How many applications did Neulevel receive for sex.biz? This might be really important to prove lack of bad faith. I could probably ramble on a lot more about this bad decision, but will save it for now.

**crabby** · 11-08-2002, 09:06 AM

Can a panelist be successfully sued, based on a decision in which the panelist did not follow the proper guidelines?

**pljones** · 11-08-2002, 09:13 AM

That would be a waste of time. The registrant should just go to the EDVA and block the decision just like the Canadian.biz registrant was able to do in Canadian court earlier this year.

**drname** · 11-08-2002, 10:59 PM

I agree the opnion that sex.biz is the Worst Domain Dispute Decision since UDPR is incorporated into the registration agreement.

This retiring judge is too old.

DomainNameFactory · 11-12-2002, 03:37 PM

I'm speechless...

**octobus** · 11-14-2002, 05:59 AM

dangerous .BIZ .....

**pljones** · 11-14-2002, 07:33 AM

.biz names can be valuable if used and promoted. I don't think anyone doubts that sex.biz is probably one of the most valuable .biz domain names.

**eeedc** · 11-14-2002, 03:21 PM

The Korean might be a cybersquatter - he did't prove otherwise.

But maybe the other person just registered the trademarks for a reverse domain name hijacking?? or does he have a real business using "sex."? I haven't looked into it.

**ps123** · 11-15-2002, 02:56 PM

deleted

mike · 11-20-2002, 07:34 PM

Anybody know if the sex.biz owner is in fact appealing? How long does he have to file as far as ICANN is concerned?

**pljones** · 11-21-2002, 10:54 AM

I asked Peter Jeong, the registrant of Sex.biz, if we was going to challenge the decision. No word yet. WHOIS still shows the registration under his name though.