January 27, 2020

ICANN Announces Implementation of Key Improvements to Public Interest Commitment Dispute Resolution Procedure Stemming from .FEEDBACK Coalition Complaint

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In October 2016, a coalition of leading brand owners from diverse industries submitted a complaint to the Internet Corporation for Assigned Names and Numbers (ICANN) regarding certain abusive practices by the operator of the .FEEDBACK new generic top-level domain (gTLD).  As outlined in the complaint, the registry operator, Top Level Spectrum, Inc. (“TLS”), was using the .FEEDBACK gTLD to exploit brand owners in a number of ways.  First, TLS failed to timely publish and adhere to transparent registration policies, causing lost opportunity costs and confusion to brand owners and denying brand owners the ability to plan the best registration strategy for the .FEEDBACK gTLD or to organize defensive registrations, thereby potentially exposing their brands to fraudulent or deceptive practices. TLS was also operating the “FREE.FEEDBACK” website, which generated communications to trademark owners regarding domain names for which they had not applied, with insufficient information or explanation, causing substantial costs and confusion to trademark owners who were deceived into believing they had registered defensive domain names matching their brands in .FEEDBACK when in fact the registrations were being made by unaffiliated third parties.  In addition, third parties who registered domain names in .FEEDBACK matching brand names were automatically provided with a website at the domain name purporting to provide a forum to provide “feedback” about the brand; however, much of the brand-related information was pre-populated by TLS, and much of it included false contact information, unauthorized use of branding elements, and many of the “reviews” themselves were automatically scraped from third-party websites like Yelp and were not, in fact, legitimate third-party comments.  In addition, TLS only offered Sunrise registrations in .FEEDBACK at exorbitant registration prices, effectively preventing the vast majority of brand owners from availing themselves of this important Rights Protection Mechanism and facilitating the proliferation of the other harmful activities described above.  

The brand coalition argued that these practices violated TLS’s registry agreement with ICANN, and in particular the “Public Interest Commitments” (“PICs”) contained in this agreement.   These PICs include an obligation for the registry operator to include a provision in its Registry-Registrar Agreement that requires Registrars to include in their Registration Agreements a provision prohibiting Registered Name Holders from, among other things, phishing, piracy, trademark or copyright infringement, fraudulent or deceptive practices, counterfeiting or otherwise engaging in activity contrary to applicable law, and providing (consistent with applicable law and any related procedures) consequences for such activities including suspension of the domain name.  They also include an obligation for the registry operator to operate the TLD in a transparent manner consistent with general principles of openness and non-discrimination by establishing, publishing and adhering to clear registration policies.  The agreement permits third parties who believe there have been violations of these obligations to institute a complaint against the registry operator under the so-called Public Interest Commitment Dispute Resolution Procedure (PICDRP).

ICANN accepted the coalition’s complaint and established a PICDRP panel to render a determination in the matter.  On March 14, 2017, the PICDRP panel issued its decision, finding that TLS had failed to operate the .FEEDBACK registry in a transparent manner consistent with general principals of openness and non-discrimination by establishing, publishing and adhering to clear registration policies.  In particular, the panel found the following activities by TLS to constitute violations of the PICs:

TLS  announced policy changes in the news media instead of through its website and without adherence to the 90-day notice requirement for changes to registry policies;

TLS failed to adhere to this notice requirement for a change in policy when it introduced, during the Sunrise period, the “Early Access, Free Speech Partner Program”;

TLS’s published policies obliged registrants to pay certain fees but did not provide any other additional information as to the amount or calculation of these fees or their payment method;

TLS failed to provide appropriate transparency in relation to the policy applicable to the FREE.FEEDBACK website for the following reasons: (i) it did not adhere to its policy requirement of verifying the email address of registrants and suspending the domain if registration fails; (ii) the incorporation of the Whois data of a trademark owner directly into a new registration generated communications to trademark owners that were not transparent for the trademark owners, lacking sufficient explanation or information or the policy itself, to enable trademark owners to understand why domains had been registered in their names; and (iii) the policy was not clear and transparent in relation to the steps necessary for the cancellation of an unwanted registration; and

TLS’s practice of self-allocating or reserving domains that correspond to trademark owners’ marks during the Sunrise period constituted a failure by TLS to adhere to its own registration and launch policies, which stated (per ICANN requirements) that Sunrise period is exclusively reserved for trademark owners and nothing is said in the policies in relation to self-allocation, which was contrary to the object of the Sunrise period itself.    

Ironically, however, the PICDRP process left much to be desired in terms of its own transparency, consistency, and fundamental fairness, and ICANN failed to enforce meaningful remedial measures against TLS, despite these panel findings.  As a result, the coalition filed seven subsequent complaints with the ICANN Complaints Office regarding the handling of the procedure by ICANN.  In particular, these complaints noted the following shortcomings:

ICANN failed to address any underlying fraudulent and deceptive conduct by failing to terminate improperly registered FREE.FEEDBACK domain names;

ICANN improperly issued guidance to the PICDRP panel, without prior notice to the parties, opining that fraudulent conduct falls outside the scope of the PICs, which foreclosed the panel’s independent consideration of whether the fraudulent and deceptive conduct alleged in the PICDRP complaint constituted a violation of its PICs;

ICANN’s remediation plan to correct the violations found by the PICDRP panel failed to prescribe specific and appropriate remedial measures to each of the PIC violations identified by the PICDRP panel;

ICANN failed to provide the PICDRP complainant’s with an opportunity to review the remediation plan and provided no rationale for its decision to close the PICDRP proceeding despite continued objections by the PICDRP complainants;

ICANN denied a request from the PICDRP complainants for information regarding the timeline in which the PICDRP panel would be constituted or its decision delivered;

ICANN denied a request from the PICDRP complainants with an opportunity to review the PICDRP panel composition to identify possible conflicts of interest; and

ICANN denied a request from the PICDRP complainants to receive a copy of the substantive written response to the PICDRP complaint filed by TLS.

On August 23, 2017, the ICANN Complaints Officer issued a consolidated response to all seven of these complaints, in which it confirmed that ICANN would (1) update its PICDRP operational process for handling PIC reports that are referred to a panel, including by implementing understood practices of information sharing with parties to an alternative dispute resolution process where a third party panel has been invoked; (2) provide documents to the relevant parties of the PIC complaints, which aligns with the aforementioned implementation of information sharing practices; and (3) conduct an evaluation of a reasonable sample of domain names included in the Whois inaccuracy report submitted in conjunction with the PICDRP complaint.

As a result of this response, ICANN facilitated a community process to formalize various important improvements to the PICDRP and an updated version of the PICDRP is going into effect on February 1, 2020.  Thus, many of these PICDRP improvements were directly precipitated by our work on behalf of brand owners through the .FEEDBACK PICDRP coalition (a predecessor to our current Global Brand Owner and Consumer Protection Coalition, GBOC) to hold nefarious registry operators accountable for their bad practices harming brand owners and consumers.  

The particular updates to the PICDRP that are being implemented include:

Aligning the procedure with the standard practice of including all of a PICDRP complainant's supporting documents when sharing the complaint with the registry operator;

Sharing documents sent to the panel with the registry operator and complainant at the commencement of the panel's evaluation period (including, for example, any registry operator written response to the complaint);

Providing communications specific to the panel's evaluation between ICANN org and the panel during the evaluation period to the registry operator and complainant; and

Aligning the procedure with the standard practice of notifying the complainant of a finding of noncompliance and the resulting enforcement notice issued against the registry operator, if applicable.

These are key enhancements that should ensure that future PICDRPs are handled in a much more open, transparent, and fundamentally fair manner in conformity with global norms of due process.  The updated version of the Public Interest Commitment Dispute Resolution Procedure is now available to review on the ICANN website.

Please contact any of the following Winterfeldt IP Group team members if you have any questions about this matter, or are interested in learning more about our work on behalf of GBOC to advocate for brand and consumer protection interests in the Internet policy space.

Brian Winterfeldt, brian@winterfeldt.law

Griffin Barnett, griffin@winterfeldt.law

Jennifer Gore, jennifer@winterfeldt.law

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