ICANN’s action against .feedback domain registry operator Top Level Spectrum demonstrates that with brand owner intervention, domain acquisition does not have to be the Wild West.
It’s hard to believe that it’s been almost four years since ICANN released the first of the new gTLD strings. New gTLDs were designed to give Internet users, including brand owners, new alternatives to the traditional gTLDs of .com and .net. Brand engagement with these new gTLDs has been varied, with some brand owners adopting a piecemeal approach to acquiring them whilst others have gone for all but the kitchen sink.
Regardless of a brand’s size or attitude, many have had to engage with those new strings that lend themselves to serving as a medium for consumer opinion and free speech such as .sucks and .feedback. Not only are there commercial, CSR and PR issues at play, but also the registry operators of these sites are not typically covered by the DPML Blocks that allow brands to blanket-block the registration of domains that include their brand with certain registry operators.
Several brand owners including BestBuy and Levi’s lodged a Public Interest Commitment Dispute Resolution Procedure (PICDRP) Complaint with ICANN, the operator of the Internet, against Top Level Spectrum (TLS) (see here). The PICDRP included a claim that TLS had changed its registration policies and discriminated against trade mark owners when pricing the new domains. Other claims included that TLS had registered the majority of brand-infringing domains itself, populated the corresponding webpages with artificial content and generated false .feedback WHOIS records to match the details of the .com owners. All of this was an alleged attempt to coerce brand owners to buy .feedback domains.
The Panel found (see here) that the only breach related to the change in its registrations policies, which was a violation of TLS’ registry obligations. TLS now has until 15 April 2017 to amend its registration policies.
This is a welcomed decision that balances the rights of brand owners with the wider public interest. The failing of registry operators to provide a transparent and non-discriminatory registration process does nothing to further this balance; rather it enables opportunistic third parties to register domains and blocks the public from using them,extorting money from brand owners in the process.
Along with concerns raised by others within the trade mark community as to the adequacy existing of rights protection mechanisms (see here), it would appear that there is growing pressure on ICANN to ensure that the domain ecosystem becomes fit-for-purpose in the new gTLD era.