This comment is being presented in my personal capacity and does not necessarily represent the views of my employer (Neustar, Inc.) and its subsidiaries or affiliates. — Jeff Neuman
A number of comments to ICANN’s proposed Post Delegation Dispute Resolution Process for new gTLD Registry Operators support a proposal by the World Intellectual Property Organization (WIPO) to hold a registry operator accountable for trademark infringement that occurs within a TLD if it “knowingly permitted, or could not have reasonably been unaware of” infringing domain names within the TLD. This is sometimes referred to as “Willful Blindness” and is used by trademark owners to hold third parties liable for contributory trademark infringement. Support for this proposal came from the International Trademark Association, the Intellectual Property Constituency of ICANN, the International Olympic Committee and other trademark owners and associations.
However, I believe this proposal represents a clear and present danger not only to domain name registry operators, but also to legitimate domain name registrants within a TLD who stand to have registrations canceled by a third party dispute provider (such as WIPO) if a domain name registry loses its TLD under the PDDRP. Simply put, WIPO’s proposal would not only contradict well established United States law, but would greatly expand the legal rights and remedies of trademark owners far beyond what exists today.
In the United States, with respect to whether or not domain name registries and registrars can be liable for contributory trademark infringement is well settled. The 1999 case of Lockheed Martin v. Network Solutions controls. In that case, the United States Court of Appeals for the Ninth Circuit found that Network Solutions was not liable to Lockheed Martin for contributory infringement as a matter of law because it was acting merely as a domain name registrar in registering domain names. More specifically, it found that in order for a service provider to be liable under the doctrine of contributory infringement, the service provider must exercise sufficient control over the infringing conduct itself. See also Tiffany v. Ebay decided on April 1, 2010. If a trademark owner cannot establish that a service provider has sufficient control over the infringing conduct, then whether or not the service provider knew, should have known or turned a blind eye towards the infringing conduct, is irrelevant.
How does this apply to gTLD Registry Operators?
Typically, a domain name registry operator only has contracts with domain name registrars who in turn have contracts with registrants (either directly or indirectly through domain name resellers). Registry Operators do not have direct contracts with registrants, which is also sometimes referred to as “no privity of contract”. Domain name registry operators merely acting as domain name registries have no direct relationship with domain name registrants and certainly have no control over any content on a domain name registrant’s website, email, etc. If the Lockheed Martin case found that domain name registrars had no control over registrants conduct, then certainly domain name registry operators, which are yet another step removed, have even less control over a registrant’s conduct. Therefore, if a service provider, like a domain name registry, does not have control over the conduct of a registrant, then in applying the Lockheed Martin test, it would not be liable for any conduct (including infringement) of one or more domain name registrants within a top-level domain. This would be the case regardless of whether or not the domain name registry knew, should have known, or even turned a “blind-eye” towards the infringement in its top-level domain.
How does this relate to the Post Delegation Dispute Resolution Process and WIPO’s proposal?
WIPO’s proposal, if adopted by ICANN, would hold registry operators accountable for domain name infringement within a top-level domain if it knew, should have known, or was willfully blind to such infringement regardless of whether or not the registry had the ability to control the conduct of a registrant. Despite the fact that under US law such a standard could not be used as a basis of liability for a domain name registry, WIPO and other trademark owners would like to see ICANN adopt a “willful blindness” standard.
Stated another way, existing United States law does NOT support willful blindness as the sole basis for direct or contributory infringement for domain name registries and registrars that merely act as domain name registries and registrars. WIPO, INTA and trademark attorneys should not be able to use the proposed Post Delegation Dispute Resolution Process as a means to advance their own desires about what trademark law should be, but rather should only be trying to shape the Post Delegation Dispute Resolution Process into a mechanism that reflects actual rights that exist under trademark law. ICANN should not sponsor efforts where advocates of certain positions are trying to CREATE NEW LAW. Until such time that there is well established law to support WIPO’s proposal on willful blindness, ICANN cannot consider WIPO’s proposal to amend the PDDRP.
If a domain name registry itself (or through an affiliated entity) does have such control over the conduct of a registrant because it is doing more than registering domain names (i.e., it is the registrant of the infringing domain names or in some other way is profiting off of infringing domain name (above and beyond collecting registration fees)), then I believe the PDDRP can and should be used. This is precisely why ICANN correctly included language in the PDDRP requiring affirmative conduct by a registry operator to profit off of systemic infringement to hold a registry accountable, and did not include a willful blindness standard. In such a case, I do not believe that a registry should be immune from liability simply because it is the registry. If you agree with me, your voice needs to be heard by ICANN.