The Internet Corporation for Assigned Names and Numbers (ICANN) recently approved new procedures allowing for the suspension of website domain names facilitating or promoting piracy, copyright or trademark infringement, or even malware, operation of botnets, and phishing.
The new procedures allows for some quick and cost-efficient ways to mitigate the long-anticipated explosion of consumer fraud and brand disparagement, which would likely result from the launch later this year of thousands of new URL suffix, also known as generic Top Level Domains (gTLDs) (e.g., .COM, .NET, etc.).
As previously discussed by Tim Bukher, here, here, and on Business Insider, the launch of gTLDs is likely to “stress trademark owners’ ability to monitor their online brands.” So these new safeguards are mostly a good development.
Risk of Abusive Domain Name Registration Significantly Reduced
To adjust to this imminent challenge, the newly voted procedures allows for the filing of an online complaint directly with your registry operators (such as Goddady.com, Register.com, Domain.com etc…), and also contractually prohibit every domain name owners from engaging in piracy and other abuses. Likewise, providing inaccurate information as to the domain name owner (such as incorrect email address) is prohibited and can result in suspension too.
This is a significant development because the new procedures should allow for some quick and cost-efficient way to deal with disingenuous competitors and other fraudulent actors, where otherwise few options were available.
Early on, the new procedures garnered support from a wide base of industries (including the software, online travel, telecommunication, and financial services industries) and are already being credited for “significantly reduc[ing] the risk of abusive [domain name] registrations.”
Suspension as a Potent Deterrent
Additionally, the threat of having ones’ website suspended should work as an adequate deterrent to discourage fraudulent activity and unfair competition. Indeed, being able to shut down another’s website, albeit temporarily, rebalances the power of the intellectual property holders vis-à-vis the cyber-squatter, infringer, or the like, as domain name suspensions tend to wreck consumer confidence.
Undefined Scope of the Suspension Procedure
At the same time, these new procedures raise some concerns as to their scope due to their vague wording. A reasonable interpretation of the suspension procedure would be to limit its application to only clear cases of abusive piracy, copyright or trademark infringement and other illegal activities.
Note that such is the current scope of ICANN’s Uniform Dispute Resolution Procedure (UDRP) as to trademark infringement. Under ICANN UDRP, the owner of a mark can file a complaint against an alleged cyber-squatter and would only succeed in the clearest case of trademark infringement.
As with trademark infringement under ICANN UDRP, the uncertain cases should be left for the court to decide. Indeed, too broad an application of the suspension mechanism would put a weapon of harassment in the hand of the most resourceful actors, which would, in turn, stifle competition and the progress of science and the useful arts.
On its face, the narrower (and more reasonable) reading of the freshly minted suspension procedure is likely to prevail. After all, a narrow reading of the suspension mechanism would take care of the very real fears associated with the URLs explosion (piracy, cybersquatting, counterfeiting), while at the same time not turn ICANN into a content regulator, shaping the boundaries of copyright and trademark law thereby usurping the court’s role.
The new procedures are a welcome addition that equips intellectual property holders with some vital ammunition in their online fights to keep their trademarks and copyrights strong. But for the scales not to tip in the other direction, the vaguely worded suspension procedure will have to be interpreted and applied narrowly.
Guest author Steven Buchwald is a law clerk on Tim’s internet law team at Handal & Morofsky. Steven is currently a law student at the Benjamin N. Cardozo School of Law and will graduate in June 2014 with concentrations in intellectual property law and litigation.