Changes to WHOIS Spell Trouble for Trademark Enforcement

23-05-2018

Changes resulting from the European Union General Data Protection Regulation could cause major headaches for trademark owners who need to police their marks online, as Lori Schulman, INTA’s Senior Director, Internet Policy, tells Ed Conlon.

When asked what issues have been occupying her  lately, Lori Schulman, INTA’s Senior Director, Internet Policy says that the effects of the implementation of the European Union (EU) General Data Protection Regulation (GDPR) have been all-consuming. The new legislation takes effect on May 25, in just two days’ time, and the situation for trademark owners is “particularly dire,” Ms. Schulman says.

The problem is that changes being made by the Internet Corporation for Assigned Names and Numbers (ICANN) to the WHOIS system—whereby domain name registries and registrars provide public access to information on registrants, including their names and addresses—mean trademark owners could lose the ability to “quickly and efficiently contact the bad guys,” according to Ms. Schulman.  

It has further consequences for trademark owners who wish to properly serve respondents to the Uniform Domain-Name Dispute-Resolution Policy and Uniform Rapid Suspension System claims.

The changes come after ICANN published a revised WHOIS model in February 2018 in order to comply with the GDPR.

According to INTA, ICANN's recently approved Interim Model will mean that vital WHOIS data, including the “critically important” registrant email address, will no longer be publicly available.

Who Gains Access?

In a letter sent to ICANN’s CEO Göran Marby, and signed by INTA CEO Etienne Sanz de Acedo, INTA said the most concerning shortcoming of the model is that it does not answer “what may be the most important question of any interim compliance model: Who can access non-public WHOIS data, and by what method?’”

"It’s not clear whether IP owners will be able to gain access to registrant information and, if they can, what the eligibility requirements will be."

Quite simply, it’s not clear whether IP owners will be able to gain access to registrant information and, if they can, what the eligibility requirements will be.

The ability to access registrant information assists in tackling a range of harms, including online counterfeiting, piracy, fraud, and cybersquatting. If access to open and accurate registrant data is unreasonably restricted or denied, efforts to protect consumers and trademark owners will be thwarted, “leading to a rise in abusive activity.”

INTA Takes Action

Ms. Schulman says that INTA has contacted all European data protection agencies (DPAs) and the European Commission representative to the Article 29 Working Party, an advisory group composed of the DPAs, to assist with interpretation and enforcement of the GDPR. As of May 25, the Working Party will become the EU Data Protection Board, with expanded authority and enforcement powers.

Along with direct contact with the DPAs, INTA is working within the ICANN system to develop solutions to open issues and is participating in community outreach and information events hosted by the Intellectual Property Constituency and the Business Constituencies. INTA filed comments on the Proposed Interim Model, and published a reaction to the Article 29 Working Party’s most recent advice to ICANN. The Working Party’s advice may be found on ICANN’s website.

The U.S. government has officially requested short-term forbearance in order to find a workable solution. INTA supports this request. The Association’s Washington, D.C., and Brussels representatives are monitoring the issue closely, with meetings being organized with government officials on both sides of the Atlantic.

Policy Development

Elsewhere on the ICANN front, trademark owners should be monitoring discussions on how to improve the organization’s policy development process to make it more efficient and more reflective of the needs of the ICANN community, says Ms. Schulman.

“It’s acknowledged by many that the ICANN working groups take too long to reach conclusions, and they are too large and inefficient for their purpose. INTA is contributing to the dialogue on improving the effectiveness of ICANN community-based policymaking,” she says.

Brand owners “need to be focused on WHOIS,” Ms. Schulman concludes. With just two days until the GDPR takes effect, it seems certain that her own gaze will remain firmly fixed on the topic.

For more information, see INTA’s “ICANN and GDPR Compliance: The Vital Need for Continued Access to Open and Accurate WHOIS Data,” at https://tinyurl.com/yczqupc8 

INTA is advocating for the following terms:

  • Forbearance on enforcement until the Interim Model is operational
  • Distinguishing between registrations of natural and legal persons
  • Limiting policy to contracted parties and registrants with an EU nexus
  • Allowing for publication in the public WHOIS of the registrant’s actual email address
  • Including a specific “Day One” solution for accessing the non-public WHOIS data mechanism in the interim
  • Addressing the need for automated requests to identify patterns of domain name abuse
  • Prescribing a compliance remedy for ICANN’s contracted parties that fail to follow the model

Lori Schulman, INTA, INTA18, internet policy, trademark owners, GDPR, WHOIS, ICANN

WIPR