WHOIS Changes on the Horizon?

Several attorneys from Sheppard Mullin attended the International Trademark Association Annual Meeting from May 7 through May 10, 2006 in Toronto, Canada. This year’s meeting focused on cross-border protection, licensing, and registration of trademarks and service marks, with particular attention on the unique challenges trademark owners face with cross border protection.

Perhaps the most troubling news coming out of the Annual Meeting is the continuing viability of "Whois," the primary search tool for identifying online infringers, may be under attack by ICANN. ICANN is an international non-profit corporation that manages all generic and country code Top-Level Domain names. It has apparently decided that "Whois" was developed to resolve technical issues involving domain names as opposed to legal issues. Accordingly, ICANN may soon undertake efforts to restrict "Whois" domain name records to just the technical contacts for the domain and not the actual registrant (or "owner") of the domain name. INTA’s Whois Subcommittee is engaged in lobbying ICANN to refrain from limiting Whois in this fashion.

Limiting the Whois search tool to just technical information may make the already difficult task of combating online infringement even more challenging. Many online investigation strategies are dependent on "Whois" records to identify infringing cybersquatters and website owners who use domain names to launch infringing websites. In addition, ICANN’s Uniform Domain Name Dispute Resolution Policy, a mandatory arbitration process that allows a trademark owner to challenge a registrant’s infringing domain name registration, requires trademark owners to conduct a reasonable investigation to determine the identity of the alleged infringing registrant. Moreover, arbitration decisions have held that providing false ownership information in Whois records may be used as evidence that an infringing domain name has been registered in bad faith (a requirement that must be shown to prevail in a UDRP action). At best, eliminating ownership information from a domain name’s Whois record would undoubtedly limit the trademark owner’s ability conduct a reasonable and effective investigation.

If any good news can be seen, it is that, even under the worse case scenario, the technical information within the Whois record will still be available. This information allows trademark owners to track down the actual registrar and, for infringing websites, the host of the site. Many hosts provide "take down" policies that allow IP owners to report instances of infringement. In our experience, appealing to website hosts may be the most effective way to combat online infringement. Many hosts have take down policies and terms of use that prohibit their customers from infringing the intellectual property rights of others. The level of cooperation varies depending on the host but many hosts and servers do enforce their policies. In general, a properly crafted take-down request is often a better alternative than trying to track down an elusive online infringer whose identity may never be known.