Trevor Little

Last month we reported that ICANN had informed the operator of the ‘.feedback’ TLD, Top Level Spectrum (TLS), that it was 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. Jay Westerdal, CEO of ‘.feedback’, confirmed today that the registry has cured the breached and fired back at MarkMonitor, one of the parties to the PICDRP. In a letter sent to the company, obtained by World Trademark Review, he alleges that the PICDRP disclosed confidential information and gives MarkMonitor 30 days to cure that breach or face being de-accredited as a registrar for the string.

The PICDRP was filed in October 2016 and co-signed by Adobe Systems, the American Apparel and Footwear Association, Best Buy Co, Darden Corporation, Facebook, Kate Spade, Levi Strauss & Co, Little Caesar Enterprises, MarkMonitor, Panera, Tailored Brands, United States Telecom Association, and Verizon Communications. It contended that TLS was non-complaint with public interest commitments 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”.

These claims were characterised by Westerdal as “baseless” but an ICANN panel subsequently 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. It also pointed to a lack of transparency in relation to fees and the policy applicable to the ‘free.feedback’ website. Additionally, ICANN deemed TLS non-compliant for a number of technical RA requirements, and gave it until April 15 2017 to cure these breaches.

Today, Westerdal confirmed that the breaches have now been cured and moved to fire back at MarkMonitor, one of the parties to the PICDRP, which he states “was successful at tricking the panel into finding we were not in compliance with ICANN public interest commitments”. In a letter obtained by World Trademark Review, he alleges that the PICDRP disclosed a confidential Registrar Accreditation Agreement (RAA) agreement, which “was not for public disclosure”, as an exhibit. He adds that the RAA as submitted also wasn’t the full agreement and “omitted Schedule B of the Registry-Registrar Agreement which transparently disclosed our pricing. As a result, the panel believed we were not being transparent on pricing”. He contends that the exhibit should have been redacted "prior to being handed over to ‘the press’ and it should have been marked in an appropriate way so ICANN would not publicly disclose it”.

As a result, TLS charges MarkMonitor with violation of the confidentiality of the agreement. Interestingly, the letter acknowledges that the confidential agreement did not come from MarkMonitor itself, but argues that – as a party to the group – it should have pointed out to co-filers that disclosing the agreement “would jeopardise any ICANN accredited registrar that was a member of the group”. MarkMonitor being the registrar amongst the filers, he therefore states: “It seems incurable. [But] please let us know what actions you will take to cure this breach with us or we will have no other option but to de-accredit your registrars.”

World Trademark Review has reached out to MarkMonitor for comment and will update this blog when received. What is clear is that the bitter battle between ‘.feedback’ and its opponents in the trademark community is not yet over. Last month Brian J Winterfeldt, co-head of the global brand management and internet practice at Mayer Brown (who submitted the PICDRP on behalf of the coalition of brands) expressed disappointment that ICANN “did not address a broader cross-section of our numerous serious concerns in its decision” and pledged to “consider other paths forward”. Today Westerdal has gone on the offensive. One suspects this will not be the last time we write about this fight. 

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