[bc-gnso] ALERTS from the Secretariat: Protecting Trademark Rights for New gTLDs: ICANN Seeks Service Providers for Trademark Clearinghouse Operation

[Benedetta Rossi <secretariat-bc@xxxxxxxxxxx>]

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 2011ICANN is issuing today a Request for Information (RFI) 
[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 ICANN3 October 2011Respondents' Q&A – TeleconferenceOn or about 4 November 
2011Written responses due25 November 2011 – 23:59 UTCPublic announcement of 
provider engagement14 Februrary 2012The deadline for responses is 25 November 
2011 at 23:59 UTC. Responses should be submitted to: 
tm-clearinghouse-rfi@xxxxxxxxx. Responses received after the deadline will not 
be considered.Q&AWhat 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; orperformance of the database 
administration function of the TMCH; orperformance 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; andTheir ability to work with ICANN and the 
community to refine core business processes and evolve the TMCH 
operation.BackgroundThe 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; andEstablish 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 InformationNew gTLD 
ProgramTrademark Clearinghouse [PDF, 320 KB]
Kind Regards,

Benedetta Rossi
BC Secretariatwww.bizconst.orgsecretariat-bc@xxxxxxxxxxx