WHOIS Information is Vital to Trademark Owners' Ability to Enforce Their Marks - opposition to the OPOC and Sunset Proposals by Pirkey Barber LLP

["Sherri Eastley" <seastley@xxxxxxxxxxxxxxxx>]

To:   GNSO Council, Internet Corporation for Assigned Names and Numbers

 

WHOIS Information is Vital to Trademark Owners' Ability to Enforce Their
Marks - opposition to the OPOC and Sunset Proposals by Pirkey Barber LLP


 

The trademark law firm of Pirkey Barber LLP ("Pirkey Barber")
appreciates the opportunity for public comment on the proposed changes
to accessibility to WHOIS data.  Pirkey Barber opposes motion 1 (the
OPOC proposal), and motion 3 (the Sunset proposal), and supports motion
2 and its proposal for additional study of the WHOIS issues.  

 

Pirkey Barber represents numerous trademark owners which have spent
millions of dollars advertising and developing the goodwill in their
marks.  In addition to traditional policing and enforcement expenses,
these trademark owners are faced with the constant expense associated
with online policing and enforcement of their trademark rights to
protect not only their brands, but also their consumers.  Motions 1 and
3 would severely undermine these efforts.  The time, effort, and cost
involved in online policing and enforcement will increase substantially
if the WHOIS data is not readily available to trademark owners.  Indeed,
the ability to contact and investigate the domain name registrant is key
to enforcement.  For small businesses, these proposals may effectively
eliminate their ability to protect the goodwill in their marks online.

 

Not only will the cost of policing and enforcement increase under the
OPOC and Sunset proposals, but these proposals would also result in
significant delay in resolving domain name disputes.  Currently, ready
access to WHOIS data provides trademark owners with timely and valuable
information needed in determining whether to file a UDRP, a federal
court action or taking other measures to combat infringement.  Under the
OPOC proposal, there is no doubt that obtaining the WHOIS data will be
delayed, and the Sunset proposal would remove the data altogether.
Further, the OPOC proposal does not provide sufficient detail to ensure
that this exchange of information occurs promptly or that the
information provided will be accurate in any respect.  This delay will
not only damage the trademark owner, but will also damage consumers.

 

The privacy concerns that appear to have prompted the OPOC proposal are
sufficiently addressed by the ability of domain name registrants to have
their identity hidden through proxy and privacy services.  Moreover, the
registrants of many of the infringing domain names and websites are
cybersquatters looking to extort money from trademark owners or
otherwise damage the reputation of the trademark owner.  Providing these
cybersquatters with an additional layer of privacy will only serve to
thwart the enforcement of valid and legitimate trademark rights.  The
disadvantages of the OPOC proposal to both consumers and trademark
owners (big and small) clearly outweigh the benefit of the additional
privacy offered through the OPOC proposal.  

 

The substantial increase in costs and delay resulting from the OPOC and
Sunset proposals will significantly hinder the ability of trademark
owners to enforce and protect their marks.  Moreover, these proposals
will substantially decrease the ability of trademarks owners to
effectively and efficiently resolve matters with the domain name
registrants, and therefore the OPOC and Sunset proposals should be
rejected.

 

Respectfully submitted,

 

Sherri L. Eastley

Pirkey Barber LLP

600 Congress Avenue, Suite 2120

Austin, Texas 78701

Email: seastley@xxxxxxxxxxxxxxxx <mailto:seastley@xxxxxxxxxxxxxxxx>  

Direct Dial: (512) 482-5232

Main Phone: (512) 322-5200

Fax: (512) 322-5201

www.pirkeybarber.com