Nominet and PIPCU, the City of London Police’s intellectual property unit, are collaborating in a pilot to protect internet users from scams online. The industry first initiative for a ccTLD registry sees Nominet introducing law enforcement landing pages for .uk domain names suspended due to criminal activity. This will provide information for those who may have been affected by the criminal activity related to the domain name.
The United States Embassy in Costa Rica has been pressuring the local ccTLD operator, NIC Costa Rica, to take down thepiratebay.cr domain name with increasing urgency as the registry resists. And if they refuse there have been threats to take the registry operation away from NIC Costa Rica.
In a letter to ICANN’s Governmental Advisory Committee [pdf], Dr. Pedro León Azofeifa, President of the Costa Rican Academy of Science, parent of NIC Costa Rica, advises that since 2015 the US Embassy in Costa Rica, representing the interests of the US Department of Commerce, who in turn is acting on behalf of American intellectual property interests, has frequently contacted the registry operator regarding the domain name for one of the leading websites providing access to an index of digital content, much of it pirated. The Pirate Bay has been operational since 2003 and has moved to several top level domains, and sometimes back again, as court cases and government, mostly US, pressure to delete the torrent site’s domain names.
The country code top level domain operator writes that The Pirate Bay has more than 70 domain names registered worldwide. They further advise the GAC that the interactions with the US Embassy “have escalated with time and include great pressure since 2016 that is exemplified by several phone calls, emails and meeting urging our ccTLD to take down the domain, even though this would go against our domain name policies.” The letter also notes that the US Department of Commerce has urged the Costa Rican “Ministry of Commerce to carry out an investigation as to why our local Ministry of Commerce to carry out an investigation as to why our organisation does not take down this domain, even though the process they ask us to follow goes against our current domain name policies.”
NIC Costa Rica advises the GAC that the “Ministry of Commerce has carried out an investigation and informed us that NIC Costa Rica was acting following best practices and has clear mechanisms to take down domain names that required a local court order. The representative of the United States Embassy, Mr. Kevin Ludeke , Economic Specialist, who claims to represent the interests of the US Department of Commerce, has mentioned threats to close our registry, with repeated harassment regarding our practices and operation policies and even personal negative comments directed to our Executive Director , based on no clear evidence or statistical data to support his claims as a way to pressure our organisation to take down the domain name without following our current policies.”
The registry notes their “domain policies work in accordance with the Tunis Agenda for the Information Society.” The registry goes on to note that “in accordance with these guidelines, when confronted with a conflict related to a domain name registered under .cr, which infringes upon the legislation pertaining to intellectual property, the registration of marks, or in which there is a crime including–but not limited to–drug trafficking, child pornography, human trafficking, or bank fraud, then NIC Costa Rica will proceed to eliminate the domain name if ordered to do so by a final judgment from the Courts of Justice of the Republic of Costa Rica.”
The registry has advised the US Embassy that they need to have a local court order in order to proceed to take down or block any domain as exemplified above. However, despite these arguments, the pressure and harassment to take down the domain name without its proper process and local court order persists.”
The protection of intellectual property (IP) is a growing challenge for governments and business around the world that spend a lot of time and money to protect their branded goods, copyrighted material, patented inventions and trade secrets. Often the protections are done overly zealously.Curbing abusive domain name registrations is one means identified on how to protect IP in a White House paper released in December with research needed into how illicit actors exploit the domain name environment going forward.The report identifies that examining a “‘follow-the-money’ approach to disrupt illicit financing models (via payment processors, ad networks and the like), to practices and policies aimed at curbing abusive practices within e-commerce platforms, social media channels, the domain name ecosystem, and the search environment, among others” will all contribute to protecting IP.It is an issue the Obama Administration has taken seriously and is committed to continuing to be vigilant in The losses are huge. According to one estimate from the International Chamber of Commerce in 2008, the worldwide market for counterfeit and pirated products alone was projected to be $1.77 trillion in 2015, and growing at rate of 22% per year.It is an issue the Obama Administration has taken seriously and is committed to continuing to be vigilant in addressing threats to intellectual property — including corporate and state sponsored trade secret misappropriation — that jeopardise our status as the world’s leader for innovation and creativity, pose a considerable threat to public health and safety, undermine legitimate business, and harm other national interests.The issue of curbing abusive domain name registrations is one means of protecting IP addressed in a paper, the FY 2017-2019 Joint Strategic Plan on Intellectual Property Enforcement [pdf], released by the White House in December.One of the best practices in the domain name environment identified in the paper was a partnership with the Motion Picture Association of America (MPAA) and the Donuts and Redix domain name registry platforms. Their solution as noted in the paper works to promote a safe and secure domain name system. Under the programme, a “trusted notifier” system has been established as part of collaborative efforts to mitigate blatant and pervasive illegal online activity in violation of platform terms of service.Looking at abusive domain name registrations, the paper notes how entities engage “in online counterfeit sales, the unlawful exploitation of copyrighted materials, and other large-scale infringing activity may engage in a combination of ‘domain name hopping’ and ‘venue shopping’ for perceived domain name safe havens. These tactics have been reported within both the gTLD and ccTLD domain name environments.”The report goes on to say that:
“While the TLD environment provides internet users with a diversity of choice, operators of websites engaged in illicit IP-based activities exploit this openness. To evade law enforcement, bad actors will register the same or different domain name with different registrars. They then attempt to evade law enforcement by moving from one registrar to another, thus prolonging the so-called “whack-a-mole” pursuit. The result of this behaviour is to drive up costs of time and resources spent on protecting intellectual property rights.””By way of illustration, an operator of a large file-sharing site found guilty of facilitating criminal peer-to-peer file sharing of movies, music and games continued to circumnavigate the globe and exploit the domain name environment by moving from ccTLD to ccTLD to evade law enforcement.”A “Notorious Markets” Out-of-Cycle Review by the Office of the U.S. Trade Representative listed illustrative markets facilitating counterfeiting and piracy. From 2013-2015 it found a total of 26 of 54 named sites, or almost half of named online sites, operate within the ccTLD environment. The report notes that as ccTLDs are outnumbered in registration numbers by gTLDs by more than 2 to 1, “the frequency of bad faith ccTLD sites appear to be disproportionate in nature and worthy of further research and analysis.”To deal with the issues in more detail, the paper identifies a number of areas where research is needed, into the precise nature and dimensions of the various challenges in IP enforcement in order to improve the effectiveness and targeting of policy, including legal reform, trade policy, and capacity building. In the domain name environment, the report identifies how do illicit actors exploit various domain environments to successfully evade law enforcement through “domain name hopping” and other strategics as an area for further research.The report can be downloaded from:
Brand protection online is an important issue facing brands these days. One aspect that gets a lot of attention is managing domain names and monitoring typosquatting. But this is only part of the problem. Monitoring websites is an even greater problem.
The cost to brands of counterfeit and pirated goods is huge. Imports of these counterfeit and pirated goods are worth nearly half a trillion dollars a year, or around 2.5 percent of global imports, with US, Italian and French brands the hardest hit and many of the proceeds going to organised crime, says a new report by the OECD and the EU’s Intellectual Property Office.
According to the report, “Trade in Counterfeit and Pirated Goods: Mapping the Economic Impact” the value of imported fake goods worldwide was US$461 billion in 2013, compared with total imports in world trade of $17.9 trillion. Up to five percent of goods imported into the European Union are fakes. Most originate in middle income or emerging countries, with China the top producer.
Fake products crop up in everything from handbags and perfumes to machine parts and chemicals notes the OECD. Footwear is the most-copied item though trademarks are infringed even on strawberries and bananas. Counterfeiting also produces knockoffs that endanger lives – auto parts that fail, pharmaceuticals that make people sick, toys that harm children, baby formula that provides no nourishment and medical instruments that deliver false readings.
One company that believes it can assist brand owners deal with brand protection online is BrandShield. BrandShield was spun-off from the Israeli Domain the Net registrar, which founder and now CEO of BrandShield Yoav Keren told this writer was the largest Israeli registrar serving many companies including Nasdaq, New York and Israeli stock exchange companies. The company is also an example of how governments can assist technology start-ups having received assistance through a technology assistance fund.
BrandShield has been independent of Domain the Net since it was established in 2013 and has partnered with FairWinds Partners, while Keren has been involved in new gTLDs since 2000. He was one of those pushing for a Hebrew internationalised domain name. The new gTLD programme was the catalyst for Keren to start BrandShield, sensing that there was no company offering adequate brand protection in the new environment.
Now with the launch of hundreds of new gTLDs and hundreds more to come, the problems of trademark infringement, fraud, brand protection, stealing traffic and users, redirections to competitors and slander are all “growth” industries. And protective registration of domain names in new gTLDs is simply not the answer to dealing with the problem.
So the problem Keren explained has moved way beyond the actual domain name registered.
“Who cares if someone registered your brand domain name last week,” Keren asked rhetorically. “There are pages and pages of content that relate to your brand with more traffic, better SEO and are more damaging.
“The problem can effect brands of all sizes. And while large brands have the resources to monitor how their brands are represented online, small- to medium-sized brands have never been able to do so effectively. And even large brands would find it more effective, financially and through their ability to monitor, to outsource.
Keren likens BrandShield from moving from the bicycle era to spaceship. “The big difference is BrandShield’s ability to use artificial intelligence to analyse multiple web metrics, including content.”
Brandshield uses what Keren describes as “natural language processing (NLP), which is similar to technologies used by search engines. But BrandShield analyses from a brand perspective – analysing the code, content, search engine results, logo recognition and more – all the metrics used for analysis.
“And it goes beyond websites and domain names monitoring mobile apps, paid advertisements on search-engines, marketplaces such as eBay and Ali-Baba and social media. Each has different problem. Using multiple metrics and big-data, the algorithms prioritise the level of risk and allow the users to focus on the problems that really matter.
The software can be used to assist with takedowns of infrinfments. And businesses from consulting companies, law firms acting on behalf of their clients or in-house can all use it, while smaller companies can even monitor brand abuse themselves.
It even covers the Chinese and Japanese languages with additional languages coming in addition to already covering all Latin languages. And it covers all ccTLDs and gTLDs.
Subscriptions are sold on a yearly and per brand basis.
For more information, see brandshield.com.
Abstract: Some of the most contentious policy debates of our time involve questions surrounding the privacy of user data and the extent to which personally identifiable information is encrypted on mobile devices, in transit, or in the cloud. However, one aspect of personal privacy often missing from the public discourse is the question of confidentiality in the Internetâs Domain Name System (DNS).
Situated conceptually in the field of Science and Technology Studies (STS) and topically within the extensive body of research on global Internet governance, this research project asks: to what extent do DNS queries raise privacy considerations; what is at stake for Internet privacy, security, business models and stability; and how can various Internet governance stakeholders address these privacy concerns? To help establish the dominant frames for conceptualizing privacy in the public sphere, the research project examines dominant media sources for a five-year period between 2010-2015 and compares this coverage data to other online privacy concerns such as search engine privacy and user device encryption. To assess the extent of privacy concerns implicated by DNS queries and understand the stakes of various privacy mitigating options, the research project draws from interviews with DNS engineers and privacy advocates; the archival mailing lists of the DNS Privacy Working Group; proceedings of meetings of the Internet Engineering Task Force; and relevant Internet Request for Comments (RFCs).
This paper makes two contributions to information and communication technology policy and scholarship: first, it will contribute to the corpus of Internet governance scholarship around the Domain Name System by expanding the spectrum of policy issues it implicates to include concerns about individual privacy; and second, it will provide an evidentiary basis to expand policymaking considerations around privacy to include DNS queries rather than primarily content and personally identifiable information.
The scourge of new gTLDs among brand owners has hit out at ICANN accusing it of making “false allegations” and disseminating “defamatory statements” against it. And they lay the blame for some of the highest prices for domain names squarely with ICANN, saying that everything they are doing was outlined in the application and contract for .sucks.The move follows a complaint from ICANN’s Intellectual Property Constituency that led to ICANN asking both the U.S. Federal Trade Commission (FTC) and, because Vox Populi is a Canadian enterprise, Canada’s Office of Consumer Affairs (OCA), to consider assessing and determining whether or not Vox Populi is violating any of the laws or regulations those agencies enforce.And what could be seen as an attempt at a sugar-coated makeover, without really changing anything, the .sucks registry operator Vox Populi Registry has abandoned the .sucks “Sunrise Premium” brand in favour of a new “Market Premium” service, telling Domain Incite it ‘is just a renaming, designed to reduce confusion among trademark owners.’In a letter to ICANN from the .sucks registry operator’s law firm [see below], ICANN is accused of repeating and adopting “the ICANN IPC’s baseless allegations that Vox Populi has engaged in ‘illicit’ activities, and that Vox Populi’s practices are ‘predatory, exploitive and coercive.’ Your letter went even further, asking the FTC to investigate whether Vox Populi has engaged in any ‘illegal’ activities.””None of the letters in question identifies any manner in which any law might actually have been broken; instead they merely suggest (without explanation or logic) that Vox Populi’s pricing may lead to ‘cybersquatting’ that could damage trademark owners.”And later in the letter, the lawyers claim that:
“In sending these public letters, and making the false allegations contained therein, ICANN has disseminated defamatory statements about Vox Populi and its business practices aimed at depriving Vox Populi of the benefits of its contract with ICANN. These actions further violate the duty of good faith and fair dealing that is implied in every contract. They also contravene ICANN’s own policies and statements of purpose. Finally, in suggesting illegality without any basis whatsoever, your actions (and those of the ICANN IPC and ICANN BC) have given rise to defamation claims against ICANN. Vox Populi hereby demands that ICANN, including any and all of its subdivisions, cease any and all such activity immediately.”The letter notes the registry wanted to make money out of brands through some of the highest Sunrise fees but blames this squarely at ICANN’s feet.”In accordance with the decisions that ICANN itself made, Vox Populi may set the price for these registrations to capture such value and at a level that the market will bear. Regardless of ICANN’s inflammatory characterizations of Vox Populi’s pricing, these prices, and the manner in which they were set, in no way violate Vox Populi’s contract with ICANN or any laws.”The letter concludes:
To be clear, Vox Populi has no interest in pursuing claims at this time. We believe that the FTC and the OCA will recognize quickly that there are simply no factual allegations that warrant any investigation and that ICANN has identified no laws or regulations under the FTC’s or the OCA’s purview that have been violated in any way. As a result, it is our hope that your letter has merely resulted in some passing, unfortunate publicity. However, if ICANN or any of its constituent bodies (or any directly responsible member thereof) engages in any further wrongful activity that prevents the company from fulfilling its contractual obligations and operating the .SUCKS registry as both ICANN and Vox Populi envisioned, the company will have no choice but to pursue any and all remedies available to it.””This letter is written reserving all rights, and does not constitute a waiver of any claims for past actions taken by ICANN or any committee or division thereof.”The letter has been reproduced in full below:May 11, 2015John O. Jeffrey
General Counsel & Secretary
12025 Waterfront Drive, Suite 300
Los Angeles, CA 90094Re: Vox Populi Registry AgreementDear Mr. Jeffrey,This firm represents ICANN’s contractual partner, Vox Populi Registry (“Vox Populi”). I write regarding your letter to The Honorable Edith Ramirez, the Chairwoman of the Federal Trade Commission (“FTC”), and The Honorable John Knubley, the Deputy Minister of Canada’s Office of Consumer Affairs (“OCA”), dated April 9, 2015, which forwarded a complaint letter from the ICANN Intellectual Property Constituency (“ICANN IPC”), and repeated and adopted the ICANN IPC’s baseless allegations that Vox Populi has engaged in “illicit” activities, and that Vox Populi’s practices are “predatory, exploitive and coercive.” Your letter went even further, asking the FTC to investigate whether Vox Populi has engaged in any “illegal” activities. More recently, ICANN’s Business Constituency (“ICANN BC”) sent letters to Ms. Ramirez and Mr. Knubley, as well as to Akram Atallah, President of ICANN’s Global Domains Division, which further republished and expanded upon these allegations.None of the letters in question identifies any manner in which any law might actually have been broken; instead they merely suggest (without explanation or logic) that Vox Populi’s pricing may lead to “cybersquatting” that could damage trademark owners. At the same time, though, the ICANN IPC’s letter expressly recognizes that registrations on Vox Populi’s .SUCKS registry are subject to ICANN’s various trademark dispute resolution processes, which protect trademark owners from cybersquatting. And although the ICANN BC letter to the FTC and the OCA asserts that ICANN “does not wish to limit free speech or prevent criticism of any business,” the only coherent expression of any potential concern is that businesses may feel compelled to register their trademarks “to defend [their] reputation from critics or competitors controlling their brand domain in .sucks and using it unfairly to criticize their products or services.” To the extent such competitive use or criticism is unfair, trademark owners have a full complement of remedies that they can seek both through ICANN’s dispute procedures and the laws of various different nations. As a result, it would seem that ICANN is not actually concerned about cybersquatting or any other illegal activity. Rather, ICANN appears concerned that registrations on the .SUCKS registry will be used to aggregate uncomplimentary commentary about companies and products–the very purpose for the registry that Vox Populi identified in the application it submitted to ICANN, and that ICANN approved.In sending these public letters, and making the false allegations contained therein, ICANN has disseminated defamatory statements about Vox Populi and its business practices aimed at depriving Vox Populi of the benefits of its contract with ICANN. These actions further violate the duty of good faith and fair dealing that is implied in every contract. They also contravene ICANN’s own policies and statements of purpose. Finally, in suggesting illegality without any basis whatsoever, your actions (and those of the ICANN IPC and ICANN BC) have given rise to defamation claims against ICANN. Vox Populi hereby demands that ICANN, including any and all of its subdivisions, cease any and all such activity immediately.As you know, on December 22, 2014, ICANN and Vox Populi entered into a contract under which ICANN voluntarily granted Vox Populi the fight to operate the registry for ICANN’s .SUCKS top level domain (“TLD”) in exchange for financial compensation. The benefits of having a .SUCKS TLD have been recognized by consumer advocates for more than a decade. As early as 2000, well known consumer rights champions such as Ralph Nader and James Love petitioned ICANN to create a .SUCKS TLD, arguing that “[t]his TLD will be used to facilitate criticism of a firm or organization, such as aol.sucks, wipo.sucks, or even greenpeace.sucks …. The domain would also be available for other uses, such as work.sucks, life.sucks, or television.sucks.” The concept of a TLD that facilitates and aggregates legitimate complaints about companies and organizations is entirely consistent with the policies and stated goals of ICANN and the Internet community. As Mr. Nader noted fifteen years ago, it has always been understood that “the .sucks TLD will be offensive to some people,” but it has nonetheless been recognized that the creation of the .SUCKS TLD will be beneficial because it will promote “free speech rights of individuals and small organizations.”And, of course, ICANN was fully aware of the goals and purpose of the .SUCKS registry when it entered into its contractual relationship with Vox Populi. Indeed, Vox Populi stated the purpose of the .SUCKS registry expressly in its registry application:The term “sucks” resonates around the globe, its intention is clear and understood. But it is now more than an epithet; it is a call to action. Whether registered by an activist or an executive, this new landscape will be devoted to encouraging an accelerated and legitimate dialog that can lead to improved customer satisfaction and market share.There are few, if any, places for raw consumer commentary and corporate interests to cohere. The .SUCKS name space will enable the benefits of a dialogue without dampening its usual initial vehemence. With its specific focus, it will make it even easier for consumers to find, suggest, cajole, complain and engage on specific products, services and companies.
Vox Populi recognized the tensions that a registry specifically targeted to channeling consumer complaints might create. As a consequence, it was careful to include in its application provisions to address any concerns about abuse by registrants. As required by ICANN’s application procedures, Vox Populi agreed to comply with ICANN’s Uniform Dispute Resolution Procedures (“UDRP”), Uniform Rapid Suspension System (“URS”), trademark post- delegation dispute resolution procedure (“Trademark PDDRP”), and Sunrise Dispute Resolution System, each of which has been designed and implemented by ICANN to address those circumstances where a trademark owner believes that a registrant or a registration has infringed its rights or used a domain improperly. As a result, trademark owners are protected from abuse on the .SUCKS registry to the exact same degree that they are on any other registry.Beyond that, Vox Populi voluntarily adopted policies to immediately address any registrant that uses a registration to engage in bullying. It implemented policies banning pornography on the .SUCKS registry, and it specifically adopted a “no parking policy” to prevent registrants from registering domains without making active use of the site. In all respects, Vox Populi has been scrupulous in implementing policies that are designed to advance the very goals that have been recognized as beneficial for the Internet community for more than a decade.ICANN reviewed Vox Populi’s application and approved it. ICANN also reviewed Vox Populi’s launch plan and sunrise policies, approved them as well, and provided a launch schedule on which Vox Populi has relied.In addition, ICANN’s Governmental Advisory Committee (GAC), which includes as a member a senior policy advisor in the US Department of Commerce–the governmental agency that has overseen ICANN since its inception–specifically reviewed and commented on Vox Populi’s registry application. The GAC’s only comment was that ICANN should require the other applicants for the .SUCKS registry to include the non-bullying clause that Vox Populi already had in its application. In essence, the GAC recognized that Vox Populi’s application went above and beyond what was appropriate and responsible.Based on the extensive review of Vox Populi’s application, ICANN entered into a contract with the company to manage the .SUCKS registry. In entering into this agreement, Vox Populi understood the value of the .SUCKS registry–both the value to the Internet community as an outlet for open discussion, and the value to Vox Populi as a business. Multiple parties submitted applications to obtain the .SUCKS registry, an auction was conducted among those qualified applicants, and Vox Populi’s successful bid was based on its appraisal of that value and the assumption that ICANN would not interfere in its ability to manage the registry in accordance with its contractual obligations. The registry agreement itself contains specific financial obligations that Vox Populi is required to meet. And, as with all new TLD registries, ICANN made a specific, considered decision not to regulate the price at which domain names would be sold. In a recent response letter to the President of the ICANN IPC, Akram Atallah, the President of ICANN’s Global Domains Division, noted that the imposition of price restrictions on new TLDs like the .SUCKS registry would be detrimental to the Internet.As you will recall, there was extensive discussion of whether price caps or controls should be included in new gTLD registry agreements when the new gTLD program was formulated. In furtherance of such discussions, ICANN engaged an expert economic consultant to study the issue. The expert concluded that price caps or ceilings were not necessary or desirable, that the imposition of price caps might inhibit the development and marketplace acceptance of new gTLDs, and that trademark holders’ rights could be protected through alternate rights protection mechanisms, such as the Uniform Rapid Suspension System (URS), the Uniform Domain Name Dispute Resolution Policy (UDRP), or trademark post-delegation dispute resolution procedure (Trademark PDDRP) you reference in your letter. Both before and after the study was released, this issue was thoroughly discussed and debated by members of the global multistakeholder community, and ultimately the determination was made not to impose price caps or price controls in the new gTLD registry agreements.Consistent with both its contractual rights, and with the policy conclusions outlined in the study conducted by ICANN’s own economic consultant, Vox Populi has priced the domains on the .SUCKS registry at levels that it believes are consistent with market value. Specifically, during the sunrise period, Vox Populi charges registrars $1999 for each domain registered on the .SUCKS registry, with a suggested retail price of $2499. Registrars are, of course, free to set the ultimate price to registrants as they see fit. Currently in the market, there are registrars selling domains for as low as $2024 and as high as $3977.99. Once the sunrise period has passed, Vox Populi will wholesale most .SUCKS domains to registrars at $199, with a suggested retail price of $249. Again, registrars will decide the retail price as they see fit. As with virtually all new TLD registries, these prices are set above the costs incurred by Vox Populi in operating the registry.The prices for a.SUCKS registration are higher than those set by many other registries (though not all), particularly with respect to the sunrise period. In its registry application, Vox Populi recognized that a trademark owner’s .SUCKS domain would be of significant value to a trademark owner to allow consumers to voice their concerns and engage in constructive dialogue with dissatisfied consumers. The original proposal for the formation of a.SUCKS registry put forward by consumer advocates would have banned companies from owning their own trademarks on the registry. In accordance with ICANN’s Rights Protection Mechanism, however, Vox Populi has permitted trademark owners to purchase their trademarks as domains, and has granted those trademark owners the exclusive right to purchase their trademarks as domains during the mandatory sunrise period. In its application, Vox Populi noted that, “[b]y building an easy-to-locate, ‘central town square’ available 24 hours a day, 7 days a week, 365 days a year, the .SUCKS registry will become a recognized destination not just for  one company, but for all. It will give assurances to customers that their voice can be heard. And it can become an essential part of every company’s customer relationship management program.” In this way, the .SUCKS registry provides significant value to those trademark owners who wish to avail themselves of the opportunity to register their trademark as a domain. In accordance with the decisions that ICANN itself made, Vox Populi may set the price for these registrations to capture such value and at a level that the market will bear. Regardless of ICANN’s inflammatory characterizations of Vox Populi’s pricing, these prices, and the manner in which they were set, in no way violate Vox Populi’s contract with ICANN or any laws.Notwithstanding the fact that Vox Populi has operated in every respect in accordance with the letter, spirit, and intent of its agreement with ICANN, the ICANN IPC sent an inflammatory letter filled with spurious allegations to the president of ICANN’s Global Domains Division, and you endorsed and forwarded that letter to the FTC. More recently, ICANN’s BC sent similar letters to the Global Domains Division, as well at the FTC and the OPC. These letters contain too many factual misrepresentations to catalogue, but in the end they accuse Vox Populi of operating a “predatory scheme” that somehow makes it more likely that trademark owners’ names will be registered by “cybersquatters.” Of course, the argument makes no sense, because to the extent that a trademark owner’s brand is registered as a domain by a cybersquatter, that trademark owner can avail itself of the remedies Vox Populi has provided through ICANN’s own UDRP, URS or Trademark TDDRP procedures. As a result, it seems clear that ICANN is not concerned with trademark infringement or cybersquatting (for which everyone agrees there exist ready remedies), but is actually concerned that the .SUCKS registry may be used for the very purpose ICANN already approved–namely (as outlined in Vox Populi’s registry application), “to create a new address on the web that will give voice to consumers,” to provide a forum “for raw consumer commentary,” and to “make it even easier for consumers to find, suggest, cajole, complain and engage on specific products, services and companies.”As Vox Populi’s contractual partner and the regulatory entity that approved of the stated purposes of the .SUCKS registry, upon receipt of the ICANN IPC complaint letter, ICANN’s appropriate response should have been to respond to the ICANN IPC and ask for some specific basis for the complaints. At the very least, it would have been appropriate to forward the complaint letter to Vox Populi to give the company the opportunity to respond before taking any action based on the allegations. Unfortunately, ICANN took neither of these reasonable actions. Instead, ICANN forwarded the defamatory allegations to the FTC and the OCA, in the process endorsing the allegations and further asserting that Vox Populi has engaged in “illicit,” “illegal” activity that has been “predatory, exploitive and coercive.” Your letter identifies no law that has been broken, no regulation that has been transgressed, and no contractual provision that has been breached. Rather, it makes broad, sweeping allegations without any factual support, and republishes the falsehoods of the ICANN IPC’s initial complaint letter. The ICANN BC letters cite statutory provisions, but offer no explanations as to how Vox Populi’s actions in any way transgress those provisions. And while the ICANN BC suggests that Vox Populi has violated its agreement with ICANN, it sites to no contractual obligation or provision that it alleges has been violated.As I am sure you are aware, every contractual relationship carries with it an implied obligation of good faith and fair dealing. Digerati Holdings, LLC v. Young Money Entm ‘t, LLC, 194 Cal. App. 4th 873, 885, 123 Cal. Rptr. 3d 736, 745 (2011) (“Every contract contains an implied covenant of good faith and fair dealing providing that no party to the contract will do anything that would deprive another party of the benefits of the contract.”). In this instance, notwithstanding the fact that Vox Populi has fulfilled every aspect of its obligations, and operated fully within the expectations of the parties, ICANN has chosen to take action to harm Vox Populi’s ability to operate within the registry agreement and has breached its obligation to conduct itself in good faith. In addition, ICANN’s actions are in contravention of its stated core values and policies. For example, in Article 3 of Vox Populi’s registry agreement, ICANN covenanted that, “[c]onsistent with ICANN’s expressed mission and core values, ICANN shall operate in an open and transparent manner.” It is hard to consider ICANN in compliance with this covenant when one of its internal constituencies writes a complaint letter to one of the organization’s divisions about Vox Populi, and an officer in another section of the organization forwards that letter asking for an investigation into “illegal” activity without even seeking a response from Vox Populi first. Finally, ICANN’s actions constitute defamation and trade libel that are fully actionable outside of the arbitration provisions of the registry agreement. Goldline, LLC v. Regal Assets, LLC, 2015 WL 1809301, at * 5 (C.D. Cal. Apr. 21, 2015) (Commercial disparagement or defamation specifically involves injury to the reputation of a business rather than disparagement of quality of goods or services.). Indeed, these concerns are heightened by the fact that the ICANN IPC is made up, in part, of owners of other registries that will be competing with the .SUCKS registry.We hereby demand that ICANN refrain from taking any further action in the future to impede Vox Populi’s ability to operate the new TLD .SUCKS registry in accordance with its contractual rights and obligations. To the extent that ICANN, the ICANN IPC or any other ICANN constituencies engage in any further wrongful activities designed to injure Vox Populi, or prevent the operation of the registry, the company will take any and all actions necessary to protect its rights.To be clear, Vox Populi has no interest in pursuing claims at this time. We believe that the FTC and the OCA will recognize quickly that there are simply no factual allegations that warrant any investigation and that ICANN has identified n___o_o laws or regulations under the FTC’s or the OCA’s purview that have been violated in any way. As a result, it is our hope that your letter has merely resulted in some passing, unfortunate publicity. However, if ICANN or any of its constituent bodies (or any directly responsible member thereof) engages in any further wrongful activity that prevents the company from fulfilling its contractual obligations and operating the .SUCKS registry as both ICANN and Vox Populi envisioned, the company will have no choice but to pursue any and all remedies available to it.This letter is written reserving all rights, and does not constitute a waiver of any claims for past actions taken by ICANN or any committee or division thereof.Sincerely,
R. David HospCc:Mr . Akram Atallah, President, Global Domains Divisions, ICANN
Mr . Cherine Chalaby, Chair, Board New gTLD Program Committee, ICANN
Mr . Fadi Chehad6, President and Chief Executive Officer, ICANN
Mr. Steve Crocker, Chair, Board of Directors, ICANN
Mr . Allen Grogan, Chief Contract Compliance Officer, ICANN
TheHonorable Edith Ramirez, Chairwoman, United States Federal Trade Commission The Honorable Pamela Miller, Representative for Canada, Government Advisory Committee, ICANN
The Honorable Suzanne Radell, Representative for United States of America, Government Advisory Committee, ICANN
The Honorable John Knubley, Deputy Minister, Canada’s Office of Consumer Affairs The Honorable Thomas Schneider, Chair, Govemment Advisory Committee, ICANN
The Honorable Lawrence Stickling, Assistance Secretary for Communications and Information and Administrator, National Telecommunications and Information Administration (NTIA)
Daniel Marti was nominated to become the new White House âIP Czarâ in August 2014 to replace Victoria Espinel. His predecessor, in yet another illustration of Washingtonâs ârevolving doorâ shuffling key individuals between the government and private sector, departed the post a year earlier to become head of BSA/The Software Alliance, the leading trade group for the software industry.
Mr. Marti was finally confirmed to his post by the Senate last month and was sworn in on Monday, April 27th by Vice President Joe Biden to a job that is officially titled âUnited States Intellectual Property Enforcement Coordinator, Office of Management and Budgetâ. Last Friday Mr. Martin delivered remarks at the Motion Picture Associationâs Creativity Conference discussing IP protection and the role of his office, which he characterized as âthe executive branchâs creative conscienceâ â adding ââRespecting IP not only encourages creativity, it also promotes the technologies for communicating that creativityâ.
Two and a half weeks ago the Chairman and Ranking Member of the U.S. Senate Judiciary Committee dispatched a letter to Mr. Marti in which they outlined their own priorities for his office. Prominent among them was engaging with ICANN to promote greater protection for intellectual property. It noted âlongstanding concerns within both the business community and the Congress regarding ICANNâs transparency and accountability mechanisms with respect to its existing functions and responsibilitiesâ. The letter also cited the ongoing multistakeholder accountability enhancement process tied to the IANA functions transition, noting that âthe success of these efforts [is] essential to increasing faith and trust in the organization on an ongoing and sustainable basisâ.
Their dispatch further noted continuing dissatisfaction within the IP sector regarding ICANNâs contractual compliance efforts vis-a-vis registries and registrars, and urged engagement toward the development of âbest practicesâ for IP protection, stating:
With respect to intellectual property enforcement concerns, we have heardÂ from a number of stakeholders that domain name registrars are not meeting their contractual obligations with ICANN, and that ICANN itself routinely has failed to prioritize and enforce its agreements. Registrars and registries, like every legitimate business that operates in the Internet ecosystem, have a constructive role to play in curbing online infringement and counterfeiting.Â We urge you to facilitate conversations among rightsholders, registrars, registries, and ICANN to identify mutually agreeable best practices in this important space.Â We urge that you become actively involved in the interagency process to advocate for strong and effective intellectualÂ property rights in this online environment.
So, notwithstanding the anticipated US withdrawal from direct oversight of the IANA functions, these Senators want the White House to bring contracted parties, ICANN and IP rightsholders together for the development of best practices for IP protection in the DNS.
One conspicuous omission in their letter is any mention of domain registrants, who have a significant stake in any process that might result in changes to the UDRP, URS, Trademark Clearinghouse, and related matters, and who are likely to be significantly impacted by any âvoluntaryâ change in registry or registrar practices. That doesnât mean that registrants arenât committed to IP protection, but does highlight the need for them to be part of the conversation as well. Thatâs especially true since review of the new gTLD rights protection mechanisms and potential UDRP reforms will be on the table in half a year.
The White House IP Czar tends to work closely with and be sensitive to the concerns of the Judiciary Committees, which have primary jurisdiction over copyright and trademark. Regardless of the substance and timing of the IANA functions transition, ICANN itself and many major registries and registrars are headquartered within the U.S. and can anticipate being contacted by Mr. Martiâs office to discuss development of best practices. They can presume from past history that inadequate progress in adopting them may lead to calls for more coercive initiatives. This all bears further watching.
The text of the letter follows:
United States Senate
Committee on the Judiciary
April 9, 2015
The Honorable Daniel H. Marti
United States Intellectual Property Enforcement Coordinator
Office of Management and Budget
Executive Office of the President The White House
Washington, D.C. 20500 Dear Mr. Marti :
Congratulations on your unanimous confirmation to serve as the Intellectual Property Enforcement Coordinator. Our Nation is the envy of the world for the quality, and the quantity, of its innovative and creative goods and services. To retain that position and to encourage other countries to develop meaningful intellectual property systems, we must ensure that our citizensâ intellectual property rights are effectively enforced at home. The Office of the Intellectual Property Enforcement Coordinator (IPEC) was authorized to fill a critical role in meeting that goal.
We write to highlight some of the pressing issues facing the IPEC that we hope will receive your attention as you begin your tenure.
Voluntary Best Practices.
The IPEC has played a constructive role in improving intellectual property enforcement by facilitating voluntary agreements between stakeholders. Such agreements, which we have advocated for, have led to positive developments on a wide range of enforcement issues, including more engagement by payment processors and advertising networks in helping to combat online infringement and the creation of the Center for Safe Internet Pharmacies. Voluntary agreements like these are an essential tool for improving intellectual property enforcement and highlight one of the important duties that we envisioned for the IPEC when the position was created.
We hope that ensuring the effectiveness of the existing voluntary agreements and identifying new areas where voluntary agreements can bring improvements will be a cornerstone of your work . We encourage you to develop methods for analyzing the effectiveness of the voluntary agreements and to discuss with stakeholders their experiences and suggestions for improvements. Among the specific areas ripe for exploration of new voluntary efforts are the role of advertising networks that drive so much of the online economy, and the âwhack-a-moleâ problem that plagues copyright holders online, where illegal content or sites are taken down only to spring back up again moments later in a new location.
Finally, as the most recent IPEC Joint Strategic Plan noted, intellectual property must be protected at ICANN, which governs the use of domain names on the Internet. There are longstanding concerns within both the business community and the Congress regarding ICANNâs transparency and accountability mechanisms with respect to its existing functions and responsibilities. There are active discussions and efforts taking place to design and implement improved ICANN accountability and transparency mechanisms. We consider the success of these efforts to be essential to increasing faith and trust in the organization on an ongoing and sustainable basis.
With respect to intellectual property enforcement concerns, we have heard Â from a number of stakeholders that domain name registrars are not meeting their contractual obligations with ICANN, and that ICANN itself routinely has failed to prioritize and enforce its agreements. Registrars and registries, like every legitimate business that operates in the Internet ecosystem, have a constructive role to play in curbing online infringement and counterfeiting. Â We urge you to facilitate conversations among rightsholders, registrars, registries, andÂ Â Â Â Â ICANN to identify mutually agreeable best practices in this important space. Â We urge that you become actively involved in the interagency process to advocate for strong and effective intellectual Â property rights in this online environment. (Emphasis added)
2014 Annual Report and Next Joint Strategic Plan.
The Office of the IPEC provides high-level, centralized coordination across the many agencies of the Federal Government that handle intellectual property enforcement. Among the Â IPECâs central roles is producing a joint strategic plan every three years, setting out a comprehensive, multi-agency approach to combat piracy and counterfeiting . The IPEC also provides annual reports to Congress on the Governmentâs enforcement efforts and makes legislative recommendations . These reports and recommendations are highly beneficial to our efforts as lawmakers.
We have not yet received the Officeâs 2014 Annual Report on its activities, as required by the Prioritizing Resources and Organization for Intellectual Property (PRO-IP) Act of 2008. While some delay is understandable in light of the transition, we expect every effort to be made to swiftly provide Congress withÂ that report.
Among the contents of that report, we are particularly interested in the Officeâs efforts to implement the 26 recommendations of the Administrationâs 2013 Joint Strategic Plan On Intellectual Property Enforcement. Moreover, as you begin work on the next Joint Strategic Plan to be issued in 2016, we look forward to discussing additional enforcement priorities.
International IP Enforcement .
Although the primary focus of the IPEC is on coordinating the domestic enforcement efforts of the Federal Government, we believe that there is a critical role for the Office to play in encouraging our trading partners and other countries to provide for adequate and effective intellectual property protections. The United States remains a net exporter of IP-protected goods, and as such, we must work to ensure that the intellectual property rights of our creators and innovators are meaningfully protected around the world. We encourage you to work with the relevant agencies, including the U.S. Patent and Trademark Office, the U.S. Trade Representative , and the U.S. Copyright Office, to find ways to use your position and the Office of the IPEC to advocate for strong and effective intellectual property rights internationally .
We look forward to working with you throughout your tenure and urge you to prioritize the issues outlined in this letter in the coming months. Please do not hesitate to reach out to us and our staffs if we can be of assistance on these matters or any additional issues that relate to the vital protection of intellectual property.
CHARLES E. GRASSLEYÂ Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â PATRICK LEAHY
ChairmanÂ Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Â Ranking Member
This article by Philip Corwin from the Internet Commerce Association was sourced with permission from:
The City of London’s Police Intellectual Property Crime Unit (PIPCU) has been given funding to ensure its existence to at least 2017, and will undoubtedly see it continue to be a thorn in the side of those who peddle counterfeit goods online.Among its successes, the IP Crime Group report 2013/2014 notes PIPCU has already investigated more than £29 million worth of IP crime and has suspended 2,359 domain names. PIPCU was also involved in the review of Nominet’s domain registration policy.The Minister for Intellectual Property, Baroness Neville-Rolfe, confirmed the £3 million has been allocated to the City of London Police’s national crime unit at the Anti-Counterfeiting Group Conference in London.PIPCU uses several methods to address intellectual property crime including some new tools and techniques. These include deregistering domain names, the removal of payment services from sites selling, counterfeit/infringing products, working with advertising companies to reduce advertising as a revenue source on such sites, and court blocking orders against Internet Service Providers (ISPs) and mainstream criminal prosecutions.PIPCU was set-up in September 2013 and is now a 21-person team consisting of detectives, police staff investigators, analysts, researchers, an education officer and a communications officer. The unit also has the added skills and expertise from two secondees; a Senior Intelligence Officer from the UK IPO and an Internet Investigator from the British Recorded Music Industry (BPI).”The Government committing to fund the Police Intellectual Property Crime Unit until 2017 is fantastic news for the City of London Police and the creative industries and very bad news for those that seek to make capital through intellectual property crime,” said City of London Police Commander Steve Head, who is the Police National Coordinator for Economic Crime.”Since launching a year ago PIPCU has quickly established itself as an integral part of the national response to a problem that is costing the UK more than a billion pounds a year. Much of this success is down to PIPCU moving away from traditional policing methods and embracing new and innovative tactics, to disrupt and dismantle criminal networks responsible for causing huge damages to legitimate businesses.”PIPCU has benefitted immensely from forging a close alliance with the IPO; forming partnerships with national and international law enforcement bodies, the creative industries and the public and private sector. This puts the unit and the City of London Police as a whole in a strong position to make an even bigger impact and greater inroads into intellectual property crime over the next couple of years.”Baroness Neville-Rolfe commented that PIPCU’s continued operation will help in the fight against IP crime, which costs the UK economy £ 1.3 billion a year in lost profits and taxes.”We’ve seen significant success in PIPCU’s first year of operation. This extra support for the unit will help them to build on this impressive record in the fight against intellectual property crime, which costs the UK at least £ 1.3 billion a year in lost profits and taxes,” said Baroness Neville-Rolfe.”With more money now being invested in ideas than factories or machinery in the UK, it is vital that we protect creators and consumers and the UK’s economic growth. Government and industry must work together to give long-term support to PIPCU, so that we can strengthen the UK’s response to the blight of piracy and counterfeiters.”The IP Crime Group report 2013/2014 is available for download from:
Nominet has found itself being sued by Cartier International AG over 12 websites which contain content Cartier believes infringe their intellectual property (IP) rights. The case is being seen as a test case, which is highlighted by Cartier choosing not to go through any established dispute resolution procedures.The .uk registry notes that if successful, the injunction would have the effect of forcing domain registries such as Nominet to automatically suspend web addresses based on a private company’s belief that the associated websites infringe its IP.Nominet considers that the Cartier legal action is not only superfluous and misdirected, but would also set a damaging precedent.In a statement, Nominet note they consistently take action to protect both consumers and brand owners using established and effective procedures.When notified of Cartier’s action, Nominet treated this as a standard data quality complaint and as a result suspended eleven of the domain names cited. The remaining domain name had already been cancelled prior to the complaint. In contrast, the claimant chose not to use any of the established mechanisms of recourse, even when those were brought to their attention by Nominet, in favour of court action.In correspondence, Cartier has stated that it aims to use the UK as a test case to “establish a precedent that can be used to persuade courts in other jurisdictions where registries are less co-operative.”This appears, according to Nominet, to acknowledge that there are already adequate mechanisms in place to pursue complaints about any website connected with a .uk domain name.As a responsible registry, Nominet notes it plays its part by ensuring that domain names do not infringe brand rights, and by a commitment to holding good data on its registrations so that consumers and businesses know who they are dealing with. Registrations with poor quality data are suspended when identified via proactive checks or brought to their attention by third parties.Companies can report concerns about the content of a website – for example sales of counterfeit goods – to the police to determine criminality. Private companies can also take civil action against the owners of websites whose content they believe infringes their rights. If this is not possible due to lack of accurate data, Nominet will suspend registrations.”Nominet has an excellent reputation for running the .uk registry for public benefit, balancing the open nature of the internet with due respect for legal rights,” said Lesley Cowley, Nominet CEO. “We have processes and procedures already in place that work well. It is disappointing that the point of the legal action is not the suspension of the domains in question – which has already happened – but to place legal liability on domain name registries elsewhere for the content of all the sites connected to their namespace.”
Porn stars Sara Jay and Angelina Castro have promised Miami Heat fans oral sex if their team won a championship, setting up a Twitter account and website with the rules and regulations of the offer should they win. But they have fallen afoul of the National Basketball Association who have demanded the domain name and Twitter account saying they breach the NBA’s intellectual property.In their letter dated 9 July posted on Black Sports Online, the NBA say:
It has come to our attention that [you] are using NBA Intellectual Property without authorization, including on the website www.teambjnba.com and Twitter page twitter.com/#!/teambjnba (collectively the “Websites”), to promote an event by including references to the Miami Heat and its players. The Websites incorporate the ‘NBA’ trademark in the domain name and account name and prominently feature NBA Intellectual Property — including the Heat team logo. Furthermore, NBAP has confirmed [you are] using a photograph depicting the likeness of Heat players Chris Bosh, Lebron James, and Dwyane Wade without their authorization and in violation of their rights. [Your] unauthorized use of NBA Intellectual Property is an attempt to capitalize on the fame and goodwill of NBA Intellectual Property and tarnishes the reputation of the NBA and the Heat. NBAP has not authorized [You] to use NBA Intellectual Property in any way and [Your] unauthorized use; therefore, constitutes among other things, trademark infringement, trademark dilution, false association, and unfair competition.However currently the original website is offline and the girls have set up a new website using the domain name www.officialteambj.com to not fall afoul of the NBA’s intellectual property demands.