ICANN has informed the operator of the ‘.feedback’ TLD that it is in breach of its registry agreement (RA), the first instance a registry has been found in breach of its ICANN compliance obligations as a result of a public interest commitment dispute resolution procedure (PICDRP) complaint. However, while characterising the move as “positive”, one of the parties to the complaint has criticised the scope of the panel’s review and hit out at ICANN for not taking stronger action.
ICANN wrote to registry Top Level Spectrum (TLS) yesterday to inform it that it was in breach of its RA due to its “failure to operate the TLD feedback in a transparent manner consistent with general principles of openness and non-discrimination by establishing, publishing and adhering to clear registration policies, as required by Section 3c of Specification 11 of the RA”.
The ‘.feedback’ TLD’s stated aims is to “solidify a positive and recognisable reputation as the best TLD for finding product information, whether it is positive or negative”. When launched in 2015 it received criticism for its pricing model and decision to automatically point all ‘.feedback’ domains to a hosted service that facilitates comment and criticism. TLS also stated plans to make available 5,000 domains matching well-known brands to third parties hosting discussion sites, and labelled its offering ‘UDRP-proof’ (in November 2016, we reported on the first successful UDRP action against a ‘.feedback’ domain).
In October we reported that a collective of brands had filed a PICDRP complaint, seeking a review into an allegedly “escalating pattern of discriminatory, fraudulent and deceptive registry misconduct” by the operators of the ‘.feedback’ gTLD. Co-signed by brands including Adobe Systems, the American Apparel and Footwear Association, Facebook, Kate Spade, Levi Strauss & Co, and Verizon, the complaint contended that TLS was non-complaint with the PIC on a number of grounds, including that it had repeatedly changed its own policies and marketing programs in a non-transparent manner; self-allocated, or reserved for allocation to third parties acting in concert with it, numerous domain names corresponding to brands; mandated that all ‘.feedback’ domains point to a live website where people can give feedback but then “hired paid professionals to act as reviewers and write fabricated reviews”; and changed its policies to launch a marketing programme, ‘free.feedback’, which resulted in TLS misusing brand owners’ ‘.com’ WHOIS information and “deceptively soliciting them to validate and renew ‘.feedback’ domain names they never sought to register”.
Jay Westerdal, CEO of ‘.feedback’, characterised the allegations as “baseless”, telling us that TLS is “operated in an open manner consistent with general principles of openness and non-discrimination”. He also labelled claims that it had hired workers to create false reviews “baseless, incorrect and liable”.
This week an ICANN panel gave its verdict. With regard to the breaches of Section 3c, the panel found violations related to the failure to adhere to the notice requirement for a change in policy when it introduced the ‘Early Access, Free Speech Partner Program’, and for announcing policy changes in the news media without adherence to the 90-day notice requirement established by the registration and launch policies. The specific announcement, during sunrise, of the allocation of 5,000 brand domains for a promotional purpose was viewed as “creating a state of confusion among trademark owners”. It also pointed to a lack of transparency in relation to fees and the policy applicable to the ‘free.feedback’ website. Finally, it noted that self-allocating/reserving domains that correspond to the trademark owners’ marks during the sunrise period constituted a failure to adhere to its registration and launch policies.
Additionally, ICANN deemed TLS non-compliant for a number of technical RA requirements, including the failure to provide a link on the primary website for the TLD feedback to a webpage designated by ICANN containing WHOIS policy and educational materials, or to publish abuse contact details. TLS has until April 15 2017 to cure the technical breaches or ICANN may commence the registry agreement termination process.
However, in its deliberations with respect to alleged fraudulent practices and misrepresentations, the ICANN panel noted that while PIC (3)(a) of Specification 11 obligates the registry operator to ensure that registrars include a provision prohibiting domain owners from engaging in certain conduct (including a prohibition against fraudulent and deceptive practices) in their registration agreements with registrants, it does not impose an obligation on the operator itself to avoid fraudulent and deceptive practices. Therefore, it concluded that, while the alleged conduct may be actionable in other forums, the submitted evidence was not sufficient to persuade the panel that the registry was non-compliant with PIC3 (3)(a).
Brian J Winterfeldt, co-head of the global brand management and internet practice at Mayer Brown, submitted the PICDRP on behalf of the coalition of brands and, while he stated “we do believe we should celebrate it as a win for consumers and the DNS”, he told World Trademark Review: “We are somewhat disappointed that the panel did not address a broader cross-section of our numerous serious concerns in its decision. Given ICANN’s lax history in the compliance arena, it is not surprising that the panel, after conferring with compliance about the scope of its jurisdiction, was given a narrow mandate to addresses TLS’ numerous breaches of its PICS.”
As well as transparency concerns regarding the process (noting that “ICANN did not initially share any information with us about when the panel would issue its decision, and who would be appointed to the panel”, or send Westerdal’s responses to the Complaint and Conference Report, although their materials were shared with the respondent), Winterfeldt states that “the decision sidestepped any discussion of TLS’ past and continuing conduct, which has now been taking place for well over a year. The decision is notably silent on the past and continuing harms caused to complainants… and does not recommend any particular relief for the complainants or any remedial steps for compliance to impose against TLS”. He added: “It is disappointing that, along with minor technical corrections, preparation of a corrective action plan alone is sufficient to cure the breach, and that implementation of the plan is not specifically required.”
While pledging to “consider other paths forward”, he concluded: “While our case was the first to be referred to a standing panel and the first PICDRP decision in ICANN’s history, we had hoped that ICANN would have used this as an opportunity to take more definitive action. In particular, ICANN could have used this decision to send a strong message to the internet community that it is accountable, and takes seriously a registry’s breach of its public interest commitments. This decision shows that, while ICANN will enforce some level of accountability for registry operators in connection with technical requirements, it does not seem fully prepared to make a stand against bad actors who are behaving counter to the public interest.”