INTA Events Eye Trends in Domain Name Enforcement

The extent to which widespread lockdowns have led businesses and consumers to online shopping is among many disruptions caused by the worldwide pandemic and it is particularly important for brand owners. By one estimate, e-commerce’s share of global retail grew from 14 percent in 2019 to about 17 percent in 2020. And as commerce moved online, the potential for trademark misuse moved with it.

For that reason, INTA has been providing the intellectual property (IP) community with more educational opportunities on Internet-related enforcement. Two such events took place last month.

INTA tailors its offerings to a broad spectrum of practitioners, from those who are just starting out to seasoned litigators. For newcomers, the Association’s Young Practitioners Committee last month hosted a panel concerning Uniform Domain Name Dispute Resolution Policy (UDRP) and domain name disputes. (See the article in this issue of the INTA Bulletin.)

Another offering is the webcast “Domain Name Enforcement: Present and Future,” which streamed live on April 22, and is available now on-demand on the INTA TO-GO platform. Speakers at this webcast are Todd Williams (Stripe, Inc., USA) as moderator, and panelists Griffin Barnett (Winterfeldt IP Group, USA), Brian Beckham (WIPO, Switzerland), Fred Felman (Appdetex, USA), and Karen Fong (Keystone Law, UK).

The panelists address high-level trends from the past year, both in domain-name enforcement specifically and systemic abuse in general, including pandemic-related developments. They also look at tools and methods that brand owners must rely on now to investigate, link, and attribute infringing domain names—in the absence of publicly available information from the domain name registration database known as WHOIS post‒European Union General Data Protection Regulation (GDPR).

Other topics include ways in which the role of the UDRP has changed post-GDPR implementation; and UDRP best practices and practical advice on missteps to avoid. Finally, the panelists discussed differences and similarities between country code top-level domain (ccTLD)-specific dispute resolution procedures and the UDRP; and shared thoughts on the upcoming UDRP policy review process at the Internet Corporation for Assigned Names and Numbers (ICANN), and the role that brand owners can play in that policy review.

Regarding UDRP specifically, Mr. Beckham noted that UDPR filings are rising. That is no surprise, he said, given the increase in domain name abuse involving trademarks and the inability for trademark owners to investigate domain name ownership.

ICANN has redacted personal data from the published WHOIS record since May 2018 due to the organization’s implementation of its interpretation of the GDPR. The World Intellectual Property Organization allows for the filing of “John Doe” actions under the UDRP, in which a plaintiff sues an anonymous defendant and then uses the court to try to identify them. That is currently the only method that guarantees access to domain name registration information.

Keep an eye out for future INTA panels and other educational resources covering Internet-related enforcement matters.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.

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