Toronto
19 June 2015
Reporter: Mark Dugdale

Canada weighs in on .sucks debate


Canada’s Office of Consumer Affairs (OCA) has told the Internet Corporation for Assigned Names and Numbers (ICANN) that legal avenues exist to protect trademark owners in the new gTLD programme.

Deputy minister of Industry Canada John Knubley, on behalf of the OCA, wrote to ICANN on 9 June, after the corporation’s general counsel, John Jeffrey, asked the OCA and the US Federal Trade Commission (FTC) to launch investigations into .sucks operator Vox Populi Registry.

Brands have complained that Vox Populi is charging “exorbitant” prices to register their trademarks during sunrise and as premium names. The registry has said that its pricing is fair and within ICANN rules.

Knubley wrote in his letter: “Canada's laws provide comprehensive protections for all Canadians. Canada has intellectual property, competition, criminal law and other relevant legal frameworks in place to protect trademark owners, competitors, consumers and individuals.”

“These frameworks are equally applicable to online activities and can provide recourse,” he explained.

He cited the example of brands being able to pursue infringers “privately in the courts” if they can prove that their trademarks have been infringed through the .sucks TLD.

The letter did not confirm whether the OCA would investigate Vox Populi as requested.

At the end of May, FTC chair Edith Ramirez wrote to ICANN to say that her agency will “take action” against Vox Populi if “we have reason to believe an entity has engaged in deceptive or unfair practices in violation of Section 5 of the FTC Act”.

Going a step further than Knubley, she said ICANN needs to address certain issues with .sucks, such as the “potential” for consumer confusion.

“I hope ICANN will encourage all gTLD holders to identify themselves on their websites so that people do not confused an activist with a company site,” wrote Ramirez.

The FTC chair also questioned whether the Trademark Clearinghouse is a suitable rights protection mechanism. “It may be very well that stronger rights protection mechanisms are needed to ensure that IP rights holders are adequately protected.”

Domains in .sucks will become generally available on 21 June.

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