MarkMonitor submits recommendations for fighting online IP infringement

As part of a set of recommendations provided to the United States Department of Homeland Security, MarkMonitor provided seven recommendations for combatting online IP infringement.

Online intellectual property infringement is a growing global threat and most often it’s conducted through the use of infringing domain names that point internet users to websites that advertise and distribute counterfeit goods or pirated content. These counterfeit operations are used to fund other criminal enterprises around the world.

In April 2019, President Trump issued a Memorandum on Combating Trafficking in Counterfeit and Pirated Goods. In that Memorandum he asked the U.S. Department of Homeland Security (DHS) to submit a report on counterfeit sales. In compiling that report, DHS solicited public comments from IP rights protection companies, marketplaces, and industry groups.

MarkMonitor, a leading corporate domain name registrar, provided seven recommendations to DHS, some of which were included in the report published on January 4, 2020:

#1 Marketplaces and social media platforms must develop proactive abuse detection and enforcement

MarkMonitor recommends that e-commerce marketplaces, social media platforms, domain name registrars and mobile application providers develop more robust IP infringement detection and enforcement tools that are proactive in suspending infringing and abusive content rather than just reactive, as most are today. Although in recent months many marketplaces have offered tools for detection and reporting infringement, many other marketplaces and platforms still have no such detection tools and the tools that do exist are not proactive enough.

More innovation is required by the marketplaces and platforms to proactively scan their platforms for trademark and copyrights infringement and remove those sites before they are even viewed by consumers that can be victimized.

MarkMonitor recently joined other registrars and registries in signing on to a framework to address various forms of DNS abuse including illegal content.

#2 Create more public and private sector partnerships

MarkMonitor recommends that the U.S. government establish more public/private sector partnerships that aim to curb intellectual property infringement in the United States and abroad. This includes partnerships between the private sector and law enforcement agencies. For example, MarkMonitor participates in ”Operation Pangea,” a partnership with U.S. and European law enforcement aimed at suspending domain names used by rogue and illegal online pharmacies.

Last year, MarkMonitor provided Interpol with more than 800 domain names that pointed to websites that distributed illegal pharmaceuticals, which were suspended en masse, sending a message to pharmaceutical counterfeiters around the globe.

MarkMonitor also participates in ”Operation In-Our-Sites” and ”Operation Aphrodite,” operations with U.S. law enforcement and Europol that target websites and social media platforms that sell counterfeit goods and pirated copyrighted content. These law enforcement partnerships result in thousands of website and domain name suspensions which helps reduce the number of counterfeit victims.

“Last year, MarkMonitor provided Interpol with more than 800 domain names that pointed to websites that distributed illegal pharmaceuticals, which were suspended en masse, sending a message to pharmaceutical counterfeiters around the globe.”

#3 Facilitate inter-industry sector coordination and collaboration

MarkMonitor recommends that the DHS facilitates inter-industry collaboration to encourage data sharing and the development of solutions specific to a particular industry. For example, two industry trade groups, the Automotive Anti-Counterfeiting Council (A2C2) and the Alliance for Safe Online Pharmacies (ASOP GLOBAL) whose vital work with law enforcement agencies already helps reduce the number of dangerous counterfeited auto parts and illegal pharmaceuticals in today’s marketplaces.

In addition, MarkMonitor believes intra or cross-industry collaboration is essential to making progress in the battle against IP infringement. Every industry sector that touches the counterfeit delivery system needs to coordinate its efforts. This includes domain name registrars and registries, search engines, payment processors and shippers.

#4 Require data and information sharing from law enforcement

While private sector partnerships with federal law enforcement have resulted in the successful removal of infringing websites and domain names, more data and information from law enforcement is needed to further strengthen these efforts. For example, in many of the operations identified above, domain name registrars and registries are not given any data on the number of websites shutdown, domain names suspended or deleted, or infringing content removed.

Because this important data is not shared with private sector partners, it’s difficult to know the effectiveness and impact these operations are having on the infringement problem. If federal law enforcement agencies would share more details and data related to the success of their operations, more cooperation and collaboration could be fostered.

MarkMonitor urges the U.S. government to require U.S. federal agencies to contribute more data and information to its private sector partners in order to strengthen these partnerships and make an even greater impact.

#5 Demand marketplace and social media platforms collaborate to make enforcements more efficient

While marketplaces and social media platforms have improved their collaboration with brand owners and are demonstrating more commitment to IP infringement detection and enforcement, these same marketplaces and social media platforms have done little to share data, information and best practices with each other to aid in combatting the problem.

Whatever the reason: fierce competition, fear of sharing commercial information, or lack of will, marketplaces and social medial platforms need to overcome these barriers and work on common solutions that can be adopted by the e-commerce and social media industries.

Imagine the efficiencies gained if a counterfeit seller, removed from one marketplace, could be removed from another marketplace simply through the use of a trusted communication from one marketplace to another. If counterfeiters knew that a takedown in one marketplace would mean removal from others, more may be deterred from establishing counterfeit sites on multiple platforms.

#6 Address the adverse impact of privacy laws on IP protection

When the European General Data Protection Regulation (GDPR) became effective more than a year ago, many domain name registries and registrars moved to redact domain ownership information from their public WHOIS record. Historically, domain name registrant information in WHOIS has been used by intellectual property owners, cybersecurity experts, brand protection service providers and law enforcement to identify, contact and prosecute individuals who publish websites that sell counterfeit goods and pirate copyrighted movies, TV shows, photographs and music. MarkMonitor has been tracking the impact of redacted WHOIS on efforts to enforce IP rights since GDPR went into effect on May 25, and the impacts have been significant.

With access to domain name ownership information severely inhibited, brand owners have had to adjust their enforcement strategies and processes to adapt to a post-GDPR world. Since GDPR went into effect, MarkMonitor has witnessed a 12% loss of operational efficiency when it comes to protecting our clients’ intellectual property rights. Without reliable access to WHOIS data, it takes more time for IP owners to find reliable contact data to enable sending takedown notices to website owners.

MarkMonitor urges the DHS to stay informed about ICANN’s Expedited Policy Development Process (EPDP) that will establish the future policy for domain name registrant data access and, most importantly, ongoing multi-stakeholder efforts to develop a unified accreditation and access policy for WHOIS data. Such a policy should allow intellectual property owners, law enforcement and other parties with a legitimate interest in accessing the registrant data the ability to do so in order to carry out enforcement activities.

#7 Promote private sector innovation

Criminal enterprises are able to defraud consumers because they are constantly developing and adapting new approaches and technologies to exploit their victims. The private sector needs to innovate to thwart these new approaches. One area showing promise is the use of data and analytics by domain name registrars and registries to identify domain names, prior to registration that will likely be used to infringe known trademarks or to distribute illegal content. MarkMonitor encourages these efforts and recommends that DHS support private sector innovation through grants or partnerships.

Given the scope and reach of online intellectual property infringement, there is little doubt Internet users will continue to be victimized. To address this growing problem requires a combination of education — making consumers aware of the impact and how to be more vigilant in spotting infringing domain names and websites — and collaboration between global bodies such as law enforcement, online marketplaces, brands and brand protection experts.

The good news is that it isn’t a losing battle; great strides have already been made in tackling the issue and reports like the one just published by the Department of Homeland Security demonstrate the need for ongoing efforts.

For a more in-depth view of our recommendations, read the full report.