[council] ICANN blog entry on trademark clearinghouse discussions in Brussels last week

[Bruce Tonkin <Bruce.Tonkin@xxxxxxxxxxxxxxxxxx>]

From:      http://blog.icann.org/


Building a Secure and Reliable Trademark Clearinghouse

by Fadi Chehadé on November 7, 2012

Last week, I invited a group of stakeholder representatives to work with ICANN 
on architecture/implementation solutions for the Trademark Clearinghouse. The 
issues we tackled included:

 ■ Registration:  How trademark data will be verified and recorded in the 
Clearinghouse.

 ■ Sunrise Management:  How new gTLD registries will use Clearinghouse data to 
confirm eligibility for early registration of domain names.

 ■ Claims Management: How new gTLD registries and registrars will facilitate 
required notices of Clearinghouse records during the domain name registration 
process.
 
Members of the Business, Intellectual Property, and Non-commercial Users 
constituencies, as well as the Registrar and Registry stakeholder groups, all 
contributed to a constructive discussion on implementation approaches, and 
found common ground in several areas.
 
Here is a summary of our findings:
 
**** Trademark Submission and Verification ****
 
** Publication of Functional Specifications
 
ICANN will provide a roadmap for the development of the trademark submission 
and verification components of the Clearinghouse in December 2012.  
It will clearly define the capabilities that will be available in the initial 
release planned for early 2013, to support those parties who will be 
implementing and building internal processes and systems to work with this 
element of the Clearinghouse.

 
** TLD Launch and Sunrise Information
 
ICANN is exploring options to help ensure that timely and accurate information 
on new gTLD launches is readily available. 
The options we discussed include an advance notice requirement and a central 
web portal to track the dates and requirements for each new gTLD sunrise 
period. 
Organizing this information in a timely fashion will keep users informed of 
current activity and help them plan effectively for upcoming launches.
 ICANN will deliver such capabilities next year before delegating any new gTLDs.

 
** Communications and Training Activities
 
We agreed that there should be implementation seminars conducted periodically 
to ensure a continuous dialogue between the implementers and the different 
types of users. 
Given the diversity of users we expect will access the Clearinghouse (including 
a range of volume and service roles), training “tracks” will help Clearinghouse 
users become familiar with specific features most useful to them. 
Educational materials, including a step-by-step guide to the verification 
process, also will be available. 
ICANN will coordinate the provisioning of such services with its delivery 
partner in the near term.
 

****  Sunrise Implementation ****
 
** Use of Signed Sunrise Data Files
 
The group agreed to support a model for sunrise in which Clearinghouse record 
data is provided to rights holders in the form of a data file cryptographically 
signed with a Clearinghouse public key.
 It can then be used to enable registration of a domain name in the sunrise 
period. 
The specific fields to be included in the file are matters for follow-up 
discussions.
 

**  Flexibility for Rights Holders in Sunrise
 
The group discussed the degree of “matching” that should be required between 
the Clearinghouse record and the Whois data for a domain name registered based 
on the sunrise eligibility. 
Given that a valid data file means that the Clearinghouse has verified the 
information, and that flexibility is important to trademark holders, we did not 
reach agreement on a matching requirement.
 However, registries are free to perform additional verification steps at their 
discretion. 
Dispute resolution procedures are available to address cases of fraud or other 
abuse relating to sunrise registrations.
 

****  Trademark Claims Implementation  ****
 
**  Centralized and De-centralized Features
 
Participants reviewed the features of possible centralized and decentralized 
systems, and agreed to support a “hybrid” system for Trademark Claims.
 In this system, a file of domain name labels derived from the trademarks 
recorded in the Clearinghouse (and hence subject to a Claims Notice) would be 
distributed to all registries and updated on a regular basis, and a live query 
system would be used to retrieve the detailed data from the Clearinghouse when 
necessary to display the Claims Notice to a prospective registrant. 
To ensure accuracy and consistency across TLDs, it was agreed that there should 
be a compliance requirement for the Clearinghouse to report to ICANN when 
registries don’t download the list of names with the frequency required.
 

** Registry guidelines
 
All new gTLD registries are required to offer a minimum 30-day sunrise period, 
and to offer the trademark claims service for the at least first 60 days of 
general registration.
 Participants agreed to collaborate on recommended definitions to support 
additional clarity around these periods, in connection with ICANN’s publication 
of guidelines for registries concerning the sunrise and claims services. 
The 30 and 60 day periods are minimums, and registries have discretion to 
extend both periods.
 

**  Data protection
 
There was discussion on implementing an appropriate framework for access and 
use of the data. 
The group considered whether measures were necessary specifically to address 
potential mining of the Clearinghouse database for purposes other than to 
support the rights protection mechanisms.
 Given that the Trademark Clearinghouse is designed to provide trademark data 
for particular purposes, there was agreement that most controls would be 
ineffective in attempting to control data elements once provided to other 
parties.
 

****  Next Steps  ****
 
The work we accomplished last week in Brussels puts us on solid ground for 
continued progress. 
We will hold follow-up meetings next week in Los Angeles with stakeholder 
groups invited to send representatives. 
A technical session with the Clearinghouse service provider will cover 
implementation architecture for Sunrise and Trademark Claims. 
A second meeting will cover the recent IPC/BC proposal for Improvements and 
Enhancements to the RPMs for new gTLDs [PDF, 68 KB], strictly focusing on 
implementation versus policy issues, as well as the business and contractual 
framework for the Clearinghouse, including the service-level agreements and 
pricing.
 
My thanks to both the stakeholders and the ICANN team for their contributions 
to this effort. We made real progress!
 
Best,
 
Fadi