[council] Protecting Trademark Rights for New gTLDs: ICANN Seeks Service Providers for Trademark Clearinghouse Operation

[Glen de Saint Géry <Glen@xxxxxxxxx>]

http://www.icann.org/en/announcements/announcement-5-03oct11-en.htm

Protecting Trademark Rights for New gTLDs: ICANN Seeks Service Providers for 
Trademark Clearinghouse Operation
(Trademark Clearinghouse or "TMCH" Service Providers)
3 October 2011
ICANN is issuing today a Request for Information 
(RFI)<http://www.icann.org/en/topics/new-gtlds/trademark-clearinghouse-rfi-03oct11-en.pdf>
 [PDF, 243 KB] to identify potential Trademark Clearinghouse (TMCH) Service 
Providers. The Trademark Clearinghouse will provide a set of rights protection 
mechanisms that are part of ICANN's program to make new top-level domains 
widely available.
The primary purpose of the TMCH is to function as an information repository, 
offering authentication and validation services for trademark data. Trademark 
holders and gTLD registry operators will rely on the TMCH to support rights 
protection mechanisms for the new gTLD space. The TMCH is designed to be 
available globally, with capabilities for validating trademark data in multiple 
scripts and responding to inquiries in multiple languages.
Part of ICANN's core mission is to preserve the operational security and 
stability of the Internet while also supporting open competition. With the 
upcoming launch of the New generic Top-Level Domain (New gTLD) Program, the 
Internet community will see the introduction of a number of new gTLD 
namespaces. To ensure that the new gTLD program gave appropriate consideration 
to trademark protection, ICANN's Board passed a resolution on 6 March 2009 to 
form an Implementation Recommendation Team (IRT) to seek enhanced solutions 
supporting trademark protection. One recommendation was the establishment of a 
Trademark Clearinghouse (TMCH).
Candidates for operating the TMCH are expected to meet the requirements 
outlined in the RFI, which include, for example, a demonstrated understanding 
of the issues concerning global intellectual property rights and the Internet, 
global capability to authenticate and validate trademark information, and 
experience designing, building, and operating secure transaction processing 
systems with 24/7/365 availability. ICANN seeks candidates with a proven 
ability to manage and support processes in multiple languages, in addition to 
fulfillment of the technical requirements.
RFI activities schedule at a glance:
Request for information issued by ICANN

3 October 2011

Respondents' Q&A - Teleconference

On or about 4 November 2011

Written responses due

25 November 2011 - 23:59 UTC

Public announcement of provider engagement

14 Februrary 2012

The deadline for responses is 25 November 2011 at 23:59 UTC. Responses should 
be submitted to: 
tm-clearinghouse-rfi@xxxxxxxxx<mailto:tm-clearinghouse-rfi@xxxxxxxxx>. 
Responses received after the deadline will not be considered.
Q&A
What is the TMCH?
The TMCH serves as an information repository that will accept and maintain data 
relating to trademark rights, including both registered and unregistered 
rights, and will support registration processes in ASCII and IDN gTLDs.
What is a TMCH Service Provider?
The functions of data authentication/validation and database administration may 
be performed by a single service provider or by two separate service providers. 
Respondent proposals will be accepted for:
·         performance of the data authentication/validation function of the 
TMCH; or
·         performance of the database administration function of the TMCH; or
·         performance of both the data authentication/validation functions and 
the database administration functions of the TMCH.
The foremost considerations for selection of the TMCH service provider(s) will 
be the ability to authenticate, validate, store and disseminate the data at the 
highest level of technical stability and security without interference with the 
integrity or timeliness of the gTLD registration process or registry operations.
What are the key functions?
Functions that are critical to the operation of the TMCH include:
·         Trademark Claims and Sunrise Services - Provide transactional 
services that allow parties such as registries and/or registrars to rapidly 
obtain information necessary to conduct Sunrise and Trademark Claims services 
for new gTLDs.
·         Database Operation - Maintain the repository of relevant trademark 
data while providing services for conducting searches and integrating with TMCH 
operations.
·         Data Authentication and Validation - Establish and execute standard 
processes for authentication of trademark rights information, validation of 
proof-of-use information, and verification of contact information.
·         Customer Service - Answer questions, resolve issues, and provide 
support for use of TMCH services.
·         Language Support - Conduct TMCH operations in multiple languages.
Who will use the TMCH and when?
With the launch of the new gTLD program, new gTLD operators will be required to 
offer services that are supported solely by the TMCH for a sunrise period of at 
least 30 days, and for an initial operating period during the first 60 days of 
general registration. Beyond that period, registries may optionally continue to 
use the TMCH trademark claims services but these are not mandated beyond the 
initial time periods specified for any given new gTLD.
What kind of information is ICANN requesting and who should respond?
Respondents should be parties interested in committing themselves as potential 
TMCH operators. The RFI covers numerous areas, but respondents should be 
prepared to discuss the following:
·         How they can scale quickly to meet the demands of a large number of 
transactions;
·         How they will provide and manage the availability of services to 
users 24x7, 365 days a year;
·         The capabilities they have to support processes in multiple languages;
·         The capabilities they have to provide global trademark authentication 
and validation services;
·         Their experience and expertise in trademark protection issues; and
·         Their ability to work with ICANN and the community to refine core 
business processes and evolve the TMCH operation.
Background
The IRT, consisting of 18 geographically diverse subject matter experts from 
the intellectual property arena, made several recommendations to enhance 
trademark protection (see 
http://www.icann.org/en/topics/new-gtlds/irt-final-report-trademark-protection-29may09-en.pdf
 [PDF, 299 KB]). The original proposal has undergone multiple revision cycles 
based on ICANN's public comment process, resulting in the current model. The 
requirements for the TMCH have been defined at a high level and will be refined 
through the RFI and subsequent processes.
The overall goals of the TMCH are to:
·         Support rights protection mechanisms in the gTLD program;
·         Operate cost-effective services that do not place undue financial or 
administrative burdens on trademark holders, registrars, and registries; and
·         Establish an ongoing partnership with stakeholders to evolve the TMCH 
so that it remains an efficient, value-added service provider for the IP and 
gTLD communities.
On 22 June 2011, the TMCH was discussed at the ICANN meetings in Singapore, 
where participants took part in a working session on a straw-man implementation 
model (http://singapore41.icann.org/node/24629). Development of the models for 
mandatory Sunrise and Trademark claims processes will continue while ICANN 
evaluates responses to this RFI.
Links to Relevant Information
·         New gTLD Program<http://newgtlds.icann.org/>
·         Trademark 
Clearinghouse<http://www.icann.org/en/topics/new-gtlds/trademark-clearinghouse-clean-30may11-en.pdf>
 [PDF, 320 KB]

Glen de Saint Géry

GNSO Secretariat

gnso.secretariat@xxxxxxxxxxxxxx<mailto:gnso.secretariat@xxxxxxxxxxxxxx>
http://gnso.icann.org