Trademark law serves two purposes. It protects the consuming public from confusion and counterfeits, as well as a brand owner’s investment in valuable brand names. Brand owners must police their brands against likely confusion or risk losing them. Given the volume of trademark infringement that the internet enables, brand owners require options other than expensive litigation to protect their brands and the public from online confusion.
The Uniform Domain Name Dispute Resolution Policy is an effective and low-cost alternative in cases in which a domain name itself infringes a trademark. But where the UDRP is not available, online brand enforcement presents significant challenges.
Domain name WHOIS records play a critical role in brand owners’ enforcement efforts. Viewing domains as property, WHOIS records reflect ownership and provide a variety of domain name information, such as the creation and expiration date, the last time the WHOIS record was updated and the registrar. Among the most important data are the domain owner’s registrant, administrative and technical contact information. If the domain registrant uses a privacy service to conceal its personal information, that information is also reflected.
On May 25, 2018, the European General Data Protection Regulation became effective. Broadly speaking, the GDPR aims to protect European Union residents from privacy breaches and data thefts. GDPR limits access to personal information of EU residents and requires affirmative consent before such information may be revealed. The Internet Corporation for Assigned Names and Numbers, the nonprofit organization that coordinates the allocation of domain name addresses on the Internet, adopted an interim measure, the Temporary Specification for Generic Top-Level Domain Registration Data,1 to bring existing WHOIS data collection obligations in line with the requirements of the GDPR.
Critically for brand owners, where domain name registration data has been redacted due to the GDPR, Section 4.3 of the temporary specification provides that users with a “legitimate and proportionate purpose” can request access to it. Enumerated “legitimate purposes” in Section 4.4 include “supporting a framework to address issues involving domain name registrations, including but not limited to: consumer protection, investigation of cybercrime, DNS abuse, and intellectual property protection” and “coordinating dispute resolution services” related to domain names, i.e., UDRP, URS, etc.
Unfortunately, the language of Sections 4.3 and 4.4 is vague, and questions about how exactly brand owners can reliably access needed WHOIS contact information remain unanswered.
The Generic Names Supporting Organization has undertaken a policy development process (the Expedited Policy Development Process) to confirm, amend or reject the temporary specification as a consensus policy, hoping to provide clarity and increase legal certainty regarding, among other things, how and under what circumstances redacted WHOIS contact information may be accessed.
On Feb. 20, the EPDP team issued its final report on phase one of its work that included recommendations regarding the requirements related to such access.2 While these recommendations provide some clarity, they leave it to registrars and registries to create their own individual processes for submitting requests for lawful WHOIS data disclosure. In phase two, the EPDP team will make recommendations regarding a standard model for lawful disclosure of nonpublic WHOIS data (including whether a standard model should be adopted at all).3
The GDPR’s impact on online brand enforcement and the WHOIS system in particular has been significant. Domain name registrant contact information that was previously available is now often redacted completely. To acquire that information, brand owners must rely on the ability of registrars and privacy services to properly balance the privacy interests of domain owners with the need for legal enforcement of intellectual property rights. Ideally, the EPDP team will find a solution that fairly and reliably accommodates both. Unfortunately, the challenges brand owners have faced with online brand enforcement even before the GDPR suggest that many important stakeholders in this field may not view brand owners’ efforts to protect the public from online confusion as a “legitimate purpose” or fully appreciate the importance of WHOIS in combatting trademark infringement.4
The Value of WHOIS
WHOIS records are often among the first resources brand owners consult when confronted with online intellectual property violations. Whether contemplating a UDRP complaint or other brand-enforcement strategies, WHOIS contact information has been a key resource.
WHOIS and the UDRP
One benefit of a UDRP complaint is that brand owners do not need the domain name’s contact information to file a complaint. Nonetheless, WHOIS information plays a critical role in a UDRP proceeding.
A successful UDRP complainant must establish each of the following elements: (1) the disputed domain is identical or confusingly similar to the complainant’s trademark or service mark; (2) the domain name registrant has no rights or legitimate interests in the domain; and (3) the domain was registered and is being used in bad faith.
When a prospective complainant evaluates its likelihood of success, element two is the most uncertain because evidence of a domain name registrant’s rights may reside with the registrant only. Other than the domain name’s resolving website (which often does not provide contact information), WHOIS records may be the only clue a brand owner has about the registrant’s potential rights. Most obviously, if the WHOIS record indicates that the domain name reflects the registrant’s personal or business name, a brand owner must research further to determine whether the WHOIS reflects a legitimate interest or merely a fraudulent ploy to protect a bad-faith registration.5
Where the registrant’s contact information is unavailable, a brand owner must weigh the risk that when the domain registrant is revealed, a legitimate interest may also be revealed that could require withdrawing the complaint. Notably, if the registrant files a response asserting reverse domain name hijacking, a complainant may not be able to unilaterally withdraw from the proceeding.6 Further, if a UDRP panelist believes that a complainant could and should have known about the registrant’s rights in the domain name, the panelist may find the complaint was brought in bad faith.7
Historical WHOIS records can save a UDRP complaint that would otherwise fail. The UDRP is written in the conjunctive, requiring complainants to establish that a domain name was both registered and used in bad faith.8 If a registrant acquired the domain name before the brand owner acquired rights in its asserted trademark, the UDRP is unavailable, because the domain could not have been registered with a bad-faith intent to profit from subsequently created trademark rights.
Before filing a UDRP complaint, therefore, brand owners must first consult the WHOIS record to determine the disputed domain name’s creation date. In a UDRP, the creation date is the presumptive date the registrant acquired the domain, unless it can be shown otherwise. Services like those offered by DomainTools LLC allow brand owners to research a domain name’s WHOIS history to help determine whether the current domain registrant is the original registrant. If not, and the current registrant acquired the domain after the brand owner’s trademark rights accrued, a UDRP may be viable.9
Additionally, one infringing domain name may be only the tip of the bad-faith iceberg. Where WHOIS contact information is available, brand owners can research other domains held by the same registrant that might also be assailable. Evidence of multiple domain names targeting a brand is strong evidence of a registrant’s bad-faith intent. Such research also allows brand owners to combine all such domain names into one UDRP complaint, rather than having to file multiple complaints and incur additional filing fees as each domain becomes known.
WHOIS and Non-UDRP Brand Enforcement
Where WHOIS information is unavailable, enforcement options include contacting the registrant’s registrar and/or privacy protection service to learn the contact information or the ISP host to have the website services shut down. These options, however, are not without challenges.
Even where it is available, WHOIS contact information can be fraudulent. If the WHOIS contact information is false, brand owners can submit a complaint to ICANN.10 ICANN will forward the complaint to the domain name registrar, who must then take reasonable steps to investigate and correct it. Where false contact information is not corrected, registrars may cancel the registration.
Further, in cases of fraud or phishing, contacting the domain owner directly or indirectly through ICANN can itself have value. Once a fraudster knows a brand owner is pursuing them, they may be more likely to move on.
Where WHOIS contact information is unavailable, brand owners can send demand letters to the registrar and/or privacy service seeking the underlying contact information, but success is not assured. Where privacy services are used, registrars may provide the privacy service’s contact information only. Further, some registrars and privacy services refuse to reveal any underlying contact information without a court order. Still other privacy services claim they will only forward a brand owner’s complaint to the domain name registrant. The registrant, of course, is under no obligation to respond, leaving a brand owner with no further information and no way of knowing if its complaint ever even made it to the underlying registrant.
Alternatively, brand owners may contact the domain name’s internet service provider host, requesting that the domain name’s email and/or website services be terminated. In general, ISP hosts located in the U.S. are more responsive than those located abroad, but even in the U.S., responsiveness is not assured. Further, some ISP hosts lease their hosting services to others (who may, in turn, re-lease them to further unidentified third parties). In other words, though researching a domain name’s ISP address may lead to an ISP host, that host may not, in fact, be the entity actually providing the hosting services.
A Patchwork of Approaches to WHOIS Records
In the absence of clear legal guidance, registrars have interpreted their obligations under the GDPR differently. A limited few, like GoDaddy Inc., only redact the information of domain name registrants located inside the EU. Others redact all contact information for all registrants. EPAG, a German registrar (part of Tucows Group), announced that it would not even collect, much less display, administrative and technical domain name contact information, believing that doing so violates the GDPR.
In response, ICANN filed an injunction in 2018 asking a German court to compel EPAG to collect this information. The Regional Court of Bonn held in favor of EPAG, finding that collecting this data would violate Article 5 of the GDPR, the data minimization rule, which states that personal data collection shall be “for specified, explicit and legitimate purposes and not further processed in a manner that is incompatible with those purposes,” as well as “adequate, relevant and limited to what is necessary in relation to the purposes for which they are processed.” ICANN has appealed the decision several times, to no avail.11
At minimum, the GDPR has provided registrars, privacy services and ISP hosts further justification for refusing to comply with demand letters and given fraudsters a further layer of anonymity. In the absence of clear guidance, more registrars and privacy services will likely adopt the most restrictive policies possible (requiring court orders before providing contact information) to protect themselves from liability under the GDPR.
Confusion Among Decision Makers
The GDPR and temporary specification require registrars to engage in a balancing test that weighs the privacy interests of the domain name registrant against the asserted “legitimate purposes” of brand owners. Absent a clear policy process for doing so, the landscape described above gives brand owners reason to doubt the judgment of those not familiar with trademark law. Even key decision makers sometimes do not understand the challenges involved in acquiring domain name contact information or display more confidence than may be warranted in registrars’ abilities to fairly balance the competing interests.
In a recent UDRP proceeding, the complainant tried to establish that the current registrant of the disputed domain name acquired it later than the domain’s creation date. The complainant submitted evidence that the website had changed several times over the domain’s life and that the WHOIS record indicated it had been recently updated. The UDRP panelist rejected the complainant’s argument stating:
It is not clear why the Registrar cannot provide information about the date the Respondent first became the registrant. It is, to say the least, highly regrettable in this case. One might expect that information is part of rudimentary customer relations and good data management practice, if nothing else.12
In this case, once the domain name owner was revealed in the course of the UDRP proceeding, the complainant could have consulted the WHOIS history at DomainTools and learned with greater specificity the chain of ownership. But for the reasons discussed above, the fact that the registrar did not readily provide such information is hardly surprising. In some UDRP cases, the underlying registrant is never revealed.13 Further, the longer WHOIS contact information remains redacted in response to the GDPR, a useful WHOIS history will become increasingly unavailable.
A likely harm that DNCL claimed it would suffer if an injunction did not issue was its inability to guarantee increased privacy for its customers’ personal contact information. The district court agreed. Further, the court dismissed DomainTool’s argument that its services provide critical cybersecurity resources to government, financial and law enforcement entities that would be harmed if the .nz data were removed. Weighing the competing interests, the court found that DomainTools’ “customers can access the registration information directly through DNCL’s website if it appears that a bad actor is using an .nz domain.’”
“On the other hand,” the court continued, “the .nz registrants’ privacy and security interests are compromised as long as defendant is publishing noncurrent or historical .nz information out of its database.”14 On appeal, the U.S. Court of Appeals for the Ninth Circuit agreed, stating: “Although the district court was presented with evidence that DomainTools’ services are used by law enforcement and cybersecurity professionals to safeguard the public, there was also evidence that such professionals could access this type of information through alternate channels.”15
Here, Ninth Circuit courts apparently refer to DNCL’s policy that allows an organization to obtain authorized access to withheld WHOIS information when they can demonstrate a “legitimate need.”16 Like the GDPR, such a policy sounds reasonable in theory, but as discussed, such policies are open to interpretation and may be inconsistently applied.
Further, what a registrar deems “legitimate” may also depend on its understanding of the legal violation at issue. In our experience dealing with a variety of online platforms, demand letters asserting allegations of fraud or counterfeiting (which may involve criminal liability) typically have a higher rate of success, while allegations of trademark infringement (which have no statutory provisions specifically outlining an online platform’s duties to respond) have the lowest. Fraud may reasonably be deemed a more serious legal violation, but trademark infringement is serious also, potentially jeopardizing valuable brands and causing consumer confusion.
Brand owners may be legitimately concerned that registrars may unfairly balance their trademark interests against the privacy interests of website operators. Clear guidance and detailed procedures regarding how such entities should respond to trademark complaints is crucial. An opportunity exists for the EPDP team to create a standard model for GDPR compliance that reduces uncertainty and provides a clear and reliable process outlining registrars’ duties to respond to legitimate requests for WHOIS data where trademark rights are at stake. Let us hope they do so.