Judge’s Ruling on Antitrust Complaint Has Implications Far Beyond the .xxx Domain

By: Ifrah Law

A recent decision by a federal judge in California has brought ICANN’s broad authority over the domain name system once again into question. Manwin Licensing International – perhaps the most lucrative provider of online adult-oriented content – brought an antitrust action against ICANN arising from the establishment of the .xxx top-level domain and the award of the registry contract for .xxx to ICM Registry. Manwin claimed, among other things, that because ICANN’s registry contract with ICM contains no restrictions on the price ICM may charge for its services (while providing for an enhanced fee to be paid by ICM to ICANN) and ICM is insulated from competition on renewal, the award of the contract violated the Sherman Antitrust Act.

In any antitrust case, the plaintiff must establish a “relevant market” that it can show is adversely affected by the anticompetitive actions. Here, Manwin sought to establish that the relevant markets affected by ICANN and ICM were the markets for affirmative registrations (i.e., the lack of an adequate economic substitute for .xxx domain names) and for defensive registrations (i.e., the need for trademark holders to protect their marks by registering .xxx names, for instance, playboy.xxx). The court made short work of Manwin’s claim with respect to the affirmative registration market, pointing out that domain names in other generic TLDs (gTLDs) are an adequate economic substitute for .xxx registrations. Indeed, the court pointed out that one of Manwin’s own websites – youporn.com – is the most popular free adult video website on the internet. Thus, the .com gTLD, among others, provides a perfectly adequate (if not superior) substitute to a .xxx registration.

However, the court was not so forgiving as to the defensive registration market. It held that Manwin adequately identified an adversely affected market in defensive registration because Manwin asserted that trademark owners and registrants of domain names in other gTLDs were compelled to register domain names in the .xxx TLD for defensive or blocking purposes, to protect their marks or other domain names from a loss of goodwill, prevent consumer confusion, or prevent association with adult entertainment. The court found no economic substitute for this market, as, it found the “only way to block a name in the .xxx TLD is to register a name in the .xxx TLD.” Therefore, the antitrust case will proceed with respect to the defensive registration market.

This decision has enormous potential consequences to the domain name registration market, particularly with the coming roll-out of new gTLDs. By way of example, one of the applied-for new gTLDs is .hotel. While Marriott has a very popular website located at marriott.com (as do Hyatt at hyatt.com, Hilton at hilton.com, etc.), these hoteliers may feel compelled to register their corresponding names and trademarks in the .hotel TLD, to protect against cybersquatters.

Compounding the problem, particularly for those with famous marks, is the issue of “typosquatters” who may register common misspellings of the mark in the new gTLD (such as marriot.hotel). Thus, the defensive registration market identified by Manwin has implications that extend far beyond the .xxx TLD — although .xxx has its own unique challenges not found with more mundane gTLDs, as the .xxx TLD’s association with adult content and pornography has the very real potential to tarnish otherwise unrelated marks. Imagine, for instance, pepsi.xxx (probably bad) versus pepsi.hotel (probably innocuous). Whether the existence of this case will cause a delay in the launch of the new gTLDs remains to be seen. It would seem that ICANN would proceed cautiously, as an adverse ruling might lead to a requirement that the registry contracts for gTLDs found to violate antitrust laws be unwound. Time will of course tell.

However, in the end, while Manwin seems to have hit upon a soft spot in ICANN’s shield, its claims ultimately seem overblown and contrary to the rights enjoyed by trademark owners and domain name registrants with respect to .xxx registrations. Setting aside blocking/sunrise rights that were afforded to trademark owners in advance of the public rollout of the .xxx TLD, trademark owners have extraordinary rights with respect to infringing domain names registered in .xxx. A trademark owner has available to it three means of challenging an infringing domain name registered in the .xxx TLD. These are the Rapid Evaluation Service (RES), the Charter Eligibility Dispute Resolution Policy (CEDRP), and the Uniform Dispute Resolution Policy (UDRP).

The RES provides a quick take-down process for infringing registered word marks or personal names of individuals. If an RES claimant shows that the domain name is identical or confusingly similar to a registered word mark that the claimant owns and uses, that the registrant has no rights or legitimate interests in the disputed domain name, and that the domain name was registered and is either being used in bad faith or cannot possibly be used in good faith, the domain name is directed to a page which states that the domain name has been deactivated. Temporary take-downs pending a final decision may be effected within two business days.

Trademark owners may also initiate a CEDRP proceeding, which will be handled by NAF, to challenge .xxx domain names that are being used in violation of the Adult Entertainment Industry eligibility requirements for the .xxx TLD (for instance, the example of pepsi.xxx, above). If the trademark owner is successful in a CEDRP proceeding, the offending domain name registration will be cancelled.

In addition, a trademark owner may initiate a UDRP proceeding with respect to a .xxx domain name registration, just as it might for an infringing domain name in any other TLD. Such a proceeding might result in the cancellation or transfer of the offending domain name – though if the registrant is not engaged in the adult entertainment industry, the domain name will not resolve.

In the meantime, since the Court’s ruling allowing Manwin’s case to proceed, ICM Registry has filed a counterclaim against Manwin, asserting antitrust and trade libel claims, amongst others. In the end, this battle promises to have consequences that extend far beyond the .xxx world in which it is clothed.