Perkins Coie comments -- ICANN WHOIS policy
Perkins Coie LLP is a law firm with offices across the United States, based in Seattle, Washington. We write on behalf of our clients regarding the ICANN proposals to revise the WHOIS data system. > History and Purpose of the WHOIS System > > At present, ICANN requires accredited registrars to collect and provide free > public access to the name of the registered domain name and its name servers > and registrar, the date the domain was created and when its registration > expires, and the contact information for the registered domain name holder. > Each is vitally important to trademark owners. Assume there is a domain name > (the "Domain Name") that is confusingly similar to a trademark (the "Mark") > owned by a US-based commercial venture (the "Mark Owner"), and that is used > to provide or advertise for services (the "Services") competitive with those > provided under the Mark. > > The registration date allows the Mark Owner to determine whether it obtained > rights in the Mark prior to registration of the Domain Name. If so, the Mark > Owner may be able to obtain transfer of the Domain Name via the Uniform > Domain Name Dispute Resolution Policy ("UDRP"); if not, the Mark Owner may > focus on its options under the Anticybersquatting Consumer Protection Act > ("ACPA"), 15 U.S.C. § 1125(d), which allows a Mark Owner to press a claim > based on either bad faith registration or bad faith use by the Domain Name > holder. The contact information for the Domain Name holder is even more > crucial. It allows the Mark Owner to research whether the Domain Name holder > may have rights or legitimate interests in the Domain Name. It also allows > the Mark Owner to assess whether the Domain Name holder owns other domain > names that are confusingly similar to the Mark, and to find whether the > Domain Name holder is a serial cybersquatter by conducting a reverse WHOIS > searches or by researching prior UDRP and ACPA decisions. The contact > information also allows the Mark Owner to contact the Domain Name holder, > inform the Domain Name holder of its rights, and potentially amicably resolve > any dispute over the Domain Name and its contents. > > The "Operational Point of Contact" Proposal is Insufficient to Protect the > Interests of Trademark Owners > > The proposal to require an "Operational Point of Contact" ("OPOC"), Motion # > 1 before ICANN, proposes a new system that would strictly limit access to > WHOIS information by substituting "proxy" data for actual contact information > by the registrant. In essence, the proposal formalizes proxy or privacy > services as ICANN policy. See Liz Gasster, Staff Implementation Notes, WHOIS > Working Group Report at 5 (Oct. 11, 2007). Under present experience with > WHOIS "privacy" or "proxy" services, it is impossible to determine common > ownership of domain names, important for determining bad faith under UDRP > par. 4(b), and it may be difficult to determine where personal jurisdiction > exists for a legal action. The problem would be equally significant under > the OPOC proposal. Moreover, the reply rate to legitimate e-mail demands are > very low, and frequently result in e-mails that "bounce" from the address > listed in WHOIS records. It is not possible to contact such registrants > directly via post or fax, or to receive any assurances that the actual > registrant has received any communication from the proxy/privacy service. > Most importantly, even if the OPOC contact information allows a trademark > owner to contact a domain name holder, it would not allow the trademark owner > to assess previous and ongoing domain name (mis)use by the domain name > holder. Enacting this revision in a way that provides an enforceable means > to contact the domain name holder but does not also provide broad, unlimited > access to underlying data by trademark owners, will similarly adversely > affect trademark owner's ability to show bad faith registration and use by > serial cybersquatters.> > > Common sense and the Staff Implementation Notes identify a number of other > insuperable problems. > > First, the OPOCs are entirely unaccountable to ICANN. Staff Implementation > Notes at 5, 9. The plan does not require that the OPOC providers have a > contract with ICANN, nor is it even clear that ICANN even has authority to > enter into contracts with non-registrars. Because ICANN will not have > privity of contract with the OPOC providers, there is absolutely no way to > ensure that OPOC providers actually transmit correspondence to domain name > registrants. As proposed, the only required contractual relationship will be > between domain name holders and OPOCs. The "reveal" option, which (if > adopted) would require an OPOC to reveal registrant data within 72 hours if > the domain name holder is non-responsive to legitimate demands, will be a > dead letter without ICANN holding enforcement power. The system would be > even more laughable if, as contemplated by the Staff Implementation Notes, > the registrant could be its own OPOC. See Staff Implementation Notes at 7. > > Second, if the system is a pure pass-through, it will not serve its stated > purpose -- to relieve domain name owners from spam e-mail generated by > data-scapers who have pulled domain name registrants' contact information > from WHOIS databases. If the system is not a pure pass-through, it could > impose significant costs by requiring the OPOC to scrutinize each incoming > e-mail for its "legitimacy," generating substantial amounts of work for the > OPOC and costs which would be transmitted to the domain name holder. If > registrar are required to verify OPOC e-mail addresses, this system could > also impose substantial additional costs, which would undoubtedly be passed > through to consumers. Despite its costs, the system would provide no means > for ensuring the continued viability of such e-mail addresses. Staff > Implementation Notes at 8. The inaptly-named Non-Commercial Users > Constituency notes that its real purpose in seeking this change is to prevent > "surveillance by intellectual property lawyers." GNSO Whois Task Force, > Final Task Force Report on Whois Services, at 13.5(5) (Mar. 12, 2007). > > Third, the responsibilities of the OPOC are entirely unclear. As the listed > owner of the Domain Name, a court could reasonably hold the OPOC liable for > any trademark infringement on the website in its name. This would > undoubtedly be tested in court, with good-faith domain name owners forced to > shoulder larger OPOC fees to subsidize OPOCs' defense of cybersquatters. > > Fourth, provisions regarding access to underlying data records are hopelessly > vague. Motion 1 is unclear. It is inconsistent about whether registrars > and/or would be guaranteed to have access to underlying data (a "thick" > registry), or if all underlying data is only accessible to the OPOC (a "thin" > registry). Staff Implementation Notes at 10-11. The proposal also provides > vague standards to sanction accessors of data for abuse of limitations on > access; in the hands of unscrupulous OPOCs, this option will undoubtedly be > used to punish trademark owners and their representatives without proper > process or appeal. Similarly, proposal to provide access to underlying > records only for a fee, while providing a deterrent to improper data > scraping, would also provide an improper deterrent to entirely legitimate > inquiries by trademark owners. Requiring encrypted databases, authenticating > access requests, or other proposals would similarly impose costs on > registrars, who would pass those costs along to registrants or trademark > owners making legitimate inquiries. > > Abolishing WHOIS Entirely is Even Worse > > Simply abolishing WHOIS requirement in total by 2008, as set forth in Motion > 3 before ICANN, would be highly detrimental to trademark owners generally and > our clients > in particular. All the reasons discussed above apply with even > greater force. It is not even clear how UDRP arbitration providers would > perform formalities checks, since there would be no way to verify the > identity of, or even to contact, the domain name holder. Arbitration > providers could not institute proceedings, and if instituted would have no > way to permit the domain name holder to prepare or file a response, or to > verify that any response filed was filed by the appropriate party. See WIPO > Supplemental Rules, Rule 5 (Dec. 1, 1999), available at > http://www.wipo.int/amc/en/domains/rules/supplemental/#5; National > Arbitration Forum, UDRP Supplemental Rules, Rule 1(d) (Jan. 1, 2006), > available at http://domains.adrforum.com/resource.aspx?id=651. Carrying this > Motion would de facto eliminate the UDRP as a viable means for resolving > trademark disputes, and have the practical effect of shunting all U.S.-based > domain disputes to the in rem provisions of the ACPA. 15 U.S.C. § > 1125(d)(2)(A). If so, trademark owners would likely seek revision of this > provision to provide for discovery of the identity of the domain name holder, > and for imposition of actual or statutory damages. > > We Recommend Further Study of WHOIS Data and Its Uses > > The current WHOIS system contains numerous flaws. The domain name holder > information is frequently, and often willfully, inaccurate, with little > effective remedy available for rights holders. The Whois Data Reminder > Policy, issued in 2003, has been simply inadequate to the task -- we have > never encountered a registrar that has cancelled the account of a paying > customer for failure to provide accurate WHOIS data. As noted by the Staff > Implementation Report, the most recent study of WHOIS records dates from 2002 > and was "not statistically valid." Staff Implementation Notes at 15-16. > Even the Implementation Notes envision only a study of willing registrants > before they register domain names. A broader study focused on actual > pre-existing domain names, which estimates the relative response rates of > both "normal" domain name holders and privacy/proxy domain name holders, > would be required to determine the extent to which existing WHOIS data is > accurate, complete, and actually permits permit legitimate parties to contact > the domain name holder. Prior to instituting OPOC motion and > institutionalizing proxy/privacy services, ICANN should create and obtain a > quantitative analysis of the existing proxy/privacy systems, and their > effectiveness in serving domain name holders and other domain name > constituencies. > > Thank you for your consideration. > Perkins Coie LLP 1201 Third Avenue, Suite 4800 Seattle, WA 98101 ph:(206) 359-3208 fax: (206) 359-4208 www.perkinscoie.com NOTICE: This communication may contain privileged or other confidential information. 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