IP Owners Say Shielding Domain Name Info Will Hurt Enforcement

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By Anandashankar Mazumdar

Copyright and trademark owners say that proposed changes in the public availability of domain name registration records will make it harder for them to shut down websites distributing unauthorized copies or selling counterfeit goods.

More than a dozen groups and companies have submitted comments to the Internet Corporation for Assigned Names and Numbers, the quasi-public agency that oversees website names, about its handling of internet domain name holders’ personal data. ICANN is considering how to comply with the European Union’s new privacy regime, the General Data Protection Regulation, which the current Whois database would violate by making publicly available the names and contact information of domain name registrants.

ICANN has always required that registrars update the Whois database, which gives the names and contact information for owners of domain names. But such openness would violate the GDPR, which takes effect May 25 when domain name owners will have to start complying with the law or face the possibility of large fines.

IP owners fear that restricting access to Whois information will interfere with their ability to enforce their rights, Steven J. Metalitz of the Coalition for Online Accountability told Bloomberg Law. Members of the coalition include Broadcast Music Inc., the Entertainment Software Association, the Motion Picture Association of America, NBCUniversal, the Recording Industry Association of America, Time Warner Inc., and the Walt Disney Co.

“What is at stake is a tool that copyright holders and trademark owners have had and relied on extensively to make sure that the internet is a safe place for creative works and other things,” Metalitz said.

In December, EU privacy regulators sent ICANN a letter warning it about continued “unlimited publication of personal data of individual domain name holders” in the publicly accessible Whois database.

Proposals Under Review

ICANN has been accepting comments on three models for changing the accessibility of data on the Whois directory. In a Jan. 28 letter to ICANN, the Intellectual Property Constituency, a group representing companies and organizations such as Louis Vuitton, the Motion Picture Association of America, and the American Intellectual Property Law Association, asked for a two-week extension of the comment period, which was to end Jan. 29.

ICANN has said that it plans to decide how to comply with the GDPR in mid-February. It has scheduled a Feb. 2 webinar to update its deliberation process.

“A lot of activities that keep the dark side of the internet at bay depend on Whois data,” Metalitz said.

User rights advocates disagree with IP owners’ concerns.

“The accusation is nonsense—reasonable data protection measures will not have an impact on enforcement of the law online,” Joe McNamee of European Digital Rights told Bloomberg Law in an e-mail message. “This is equally true for serious infringements online and for ‘IPR’ enforcement.”

ICANN’s failure to adequately protect personal data itself is a cause of abuse and fraud, McNamee said.

“The adaptation of Whois to GDPR standards will help prevent a lot of the abuse of Whois data that is currently rampant,” he said.

These abuses include the possibility of authoritarian governments using Whois information to track down “protesters or democracy activists,” Jeremy Malcolm of the Electronic Frontier Foundation told Bloomberg Law.

IP enforcement will undoubtedly become “more costly and complicated and time-consuming,” but that the changes to Whois accessibility are inevitable, not only because of the EU’s rules, but under the laws of other countries, more and more of which are adopting policies similar to the EU’s, Malcolm said.

Change Will Have to Come

Changes to Europe’s privacy regime aren’t coming out of the blue, Michele Neylon of Ireland-based registrar Blacknight Internet Solutions Ltd. told Bloomberg Law. ICANN has had many years to figure out how to comply with European data privacy law, Neylon said.

“If they’d made incremental changes starting about 15-odd years ago, we wouldn’t be in the situation we’re in now,” Neylon said.

Whatever ICANN decides, domain name registrars and registries are going to have to find a way to comply with privacy law.

“It’s not a case of registrars or registries trying to hinder the activities of intellectual property rightsholders. It’s a case of registrar and registries needing to comply with the law, and ICANN’s contract saying something very different,” Neylon said.

ICANN declined a Bloomberg Law request for comment.

To contact the reporter on this story: Anandashankar Mazumdar in Washington at amazumdar@bloomberglaw.com

To contact the editor responsible for this story: Mike Wilczek at mwilczek@bloomberglaw.com

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