Tag Archives: Trademark Clearinghouse

US Lawmakers Want Assurance New gTLDs Will Protect Trademarks And Not Break Internet

Key members of the US Congress are still raising concerns about ICANN’s plan to new gTLDs, writing to the organisation outlining concerns that any new strings introduced will not harm trademark holders and requesting assurance the public will have adequate opportunity to comment.In a letter to ICANN, that follows an earlier one in December 2011, said that since the earlier letter, “brand-owners, consumers, and members of the law enforcement community have continued to voice concerns about the adequacy of ICANN’ s proposed steps to protect against increased risks of cyber-squatting, fraud, and abuse in the new gTLDs.”The letter from the chairman and ranking member of both the Senate and House judiciary committees [PDF] asks ICANN to provide them “with further details about the steps ICANN is taking to fulfil its commitment to ensure that the New gTLD process will provide ‘a secure, stable marketplace’ with input from ‘the community as a whole.'”Responding to the earlier letter, “ICANN emphasised that the New gTLD programme ‘includes robust processes to assure that the community as a whole – with particular opportunities for governments and rights holders – has the opportunity to raise objections that could lead to the rejection of applications,’ including because of user confusion, infringement of legal rights, and misappropriation of community names or labels.”But the lawmakers are unconvinced saying that “despite this assurance, many members of the public outside the ICANN community are unaware that the New gTLD programme is underway. Of those who are aware, few know about the public comment process or comprehend that their opportunity to participate in this forum is scheduled to end in less than a week.”The committee members ask ICANN to answer the following three questions:

  • what steps has ICANN taken to inform members of the public outside the ICANN community about the New gTLD public comment process
  • what steps is the Independent Objector taking to encourage and maximise public input and what role will the Independent Objector play in articulating and representing public concerns about specific gTLD applications
  • will ICANN keep open the New gTLD public comment forum to enable comments from the broader public and allow the Independent Objector to receive their views?

The letter reiterates their concerns regarding inadequate protections for trademark holders, including that the Trademark Clearinghouse will only allow complaints from trademark holders for 60 days. And asks is there any reason not to extend this period. Other concerns here are when will the review occur for the Clearinghouse policies and concerns of high registration fees in new gTLDs for trademark holders protecting their brands.

ICANN: Protecting Trademark Rights in New gTLDs: Selection of Trademark Clearinghouse Service Providers

ICANN logoICANN is pleased to announce that it is working with Deloitte and IBM on implementation of Trademark Clearinghouse services.

The Trademark Clearinghouse will function as an information repository, offering authentication and validation services for trademark data. Trademark holders and gTLD registry operators will rely on the Clearinghouse to support rights protection mechanisms for the new gTLD space. The Clearinghouse is designed to be available globally, with capabilities for validating trademark data from multiple global regions.

In accordance with the direction set by the community, the authentication and database administration functions of the Clearinghouse are separated. Upon the anticipated execution of final agreement(s), Deloitte Enterprise Risk Services (a department of Deloitte Bedrijfsrevisoren BV ovve CVBA) will serve as the authenticator/validator service provider, and IBM [International Business Machines of Belgium sprl / bvba] will provide technical database administration services. Both Parties will subcontract IPClearingHouse BVBA (aka CHIP) in order to facilitate theses services.

Both providers are highly qualified, with significant experience, technical capacity, and proven ability to manage and support processes.

About Deloitte: “Deloitte” is the brand under which her member firms offer a broad range of audit, consulting, financial advisory, risk and tax services to clients all over the world. In this respect, Deloitte’s validation team has been provided the opportunity to manage several successful Sunrise validation processes for many ccTLDs and gTLDs, including but not limited to .ASIA, .TEL, .ME, .CO, .SO.

About IBM: IBM is an industry pioneer and has deep and broad experience. IBM knows how to play the role of a strategic partner – one that will bring industry thought leadership to the table and proactively contribute to customers’ business and IT strategy. IBM has one of the largest global infrastructures, which has led to economies of scale that is passed on to its customers. IBM’s excellent IT professionals and ability to leverage intellectual capital has led to one of the most respected groups of IT skills in the industry.

These service providers have been selected out of a process of consideration in accordance with the Request for Information issued 3 October 2011. Requirements for candidate service providers included: 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 has also sought candidates with a proven ability to manage and support processes in multiple languages, in addition to fulfillment of the technical requirements.

ICANN is currently working with Deloitte and IBM to build and prepare for operation of Trademark Clearinghouse services to support the new gTLDs. Both firms will take part in the public discussion refining technical and operating specifications.

Information about the Trademark Clearinghouse, including the current implementation model, and estimated fees, is available at newgtlds.icann.org/en/about/trademark-clearinghouse. This page is a new resource and will be updated on a regular basis to track progress toward launch of the Clearinghouse operations.

This ICANN announcement was sourced from:
www.icann.org/en/news/announcements/announcement-3-01jun12-en.htm

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


(Trademark Clearinghouse or “TMCH” Service Providers)

ICANN 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 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@icann.org. 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 24×7, 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 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 (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.

This ICANN announcement was sourced from:
www.icann.org/en/announcements/announcement-5-03oct11-en.htm

ICANN Board Votes to Defer .XXX, Appeases Trademark Holders, in Nairobi Meeting

ICANN concluded its week-long meeting in Nairobi on Friday 12 March with a number of notable and controversial decisions. The board meeting, the traditional final happening at its meetings held three times per year around the world, voted to defer a decision on the .XXX Top Level Domain and to scrap the Expressions of Interest Proposal for new generic TLD applicants. However they did vote to create a Trademark Clearinghouse and Uniform Rapid Suspension System to protect trademark holder’s rights in new gTLDs. But the decisions from the ICANN board were given a poor mark by Milton Mueller writing on the Internet Governance blog.

.XXX
The proposal for the .XXX TLD, for adult websites, has been resurrected following an independent review that was concluded in February. The review found the decision to reject .XXX was unfair and should be reconsidered. The .XXX proposal has been hanging around ICANN for some years now, having first been approved in 2005 and then rejected two years later.

Then in 2008 ICM Registry, the .XXX applicant, filed a complaint with the Independent Review Panel (IRT). The IRT, independent of ICANN but recognised in its bylaws, concluded in its report that the decision to reject .XXX was unfair and should be reconsidered.

At the board meeting on Friday the board directed ICANN’s CEO and general counsel to finalise a report of possible process options for further consideration. This report is to be made available with options for public comment within 14 days to enable the community to provide input on the board processes.

The report will be posted for public comment and then further consideration by the board at its 38th meeting in Brussels in late June.

Expressions of Interest Process for New GTLDs
The ICANN board, in a surprise decision to many, decided to cancel the idea of calling for Expressions of Interest (EoI) for new generic Top Level Domains. It was expected ICANN would call for EoIs to gauge support for new gTLDs. This followed the call for ICANN staff to present options for the potential impact of such a process at the previous meeting in Seoul, South Korea, in December 2009.

ICANN decided that the potential benefits of proceeding with an EOI were outweighed by the costs of potential delay to the new gTLD programme.

Commenting on the decision, Rod Beckstrom, ICANN’s CEO and president, said the EoI process would have “added another step, another process, another set of community discussions and debate.”

The implementation process for new gTLDs is taking much longer than anticipated with dates for when ICANN expected to be taking applications being pushed back several times. This has created problems for would-be applicants.

Also on new gTLDs, the board decided that there will be no co-ownership of registries and those acting as registrars for any new gTLD.

Trademark Clearinghouse and Uniform Rapid Suspension System
In another development linked to new gTLDs, ICANN has agreed to establish a Trademark Clearinghouse and a Uniform Rapid Suspension System. The Trademark Clearinghouse is to be a means of protecting the rights of trademark holders in any new gTLDs that are created while the Uniform Rapid Suspension System is to be the process for suspending domain name registrations considered to be trademark abuses in new gTLDs.

“In forming this trademark clearinghouse, we’ve listened to our community about providing trademark protection,” said Peter Dengate Thrush, ICANN’s Chairman of the Board. “We’ve also adopted an extremely rapid process by which people or organisations can challenge trademark infringement.”

The board has asked for final versions to be developed for inclusion in version four of the Draft Applicant Guidebook.

Internationalised Domain Names and gTLDs
ICANN is backing away from the rule that any new gTLD string has to be at least three characters, voting in its board meeting to reconsider the requirement following public comment that this would limit the utility of Internationalised Domain Names (IDN) gTLDs in some regions of the world. A revised policy is expected in the next draft (version four) of the Draft Applicant Guidebook.

DNS Security
Earlier in the week at the meeting, the ICANN’s CEO and president, Rod Beckstrom made some controversial comments on DNS security.

“The domain name system is under attack today as it has never been before. I have personally consulted with over 20 CEOs of the top registries and the top registrars globally, all of whom are seeing increasing attacks and complexity of attacks and who are extremely concerned,” Beckstrom said.

However Chris Disspain, chairman of the Country Code Name Supporting Organization (ccNSO) council, was none too impressed. Disspain called Beckstrom’s comments “inflammatory”, saying:
“Your inflammatory comments to governmental representatives regarding – in your view – the precarious state of the security of the DNS, have the potential to undermine the effective and productive relationships established under ICANN’s multi-stakeholder model.

“This could cause great concern among governments regarding how elements of critical internet resources are operated and managed in their countries.

“We suggest that ICANN work with all relevant internal and external stakeholders to develop a clear analysis of the current mechanisms in place to ensure the ongoing security of the DNS. As a first step, we urge you to share with us and other stakeholders the underlying facts or studies that originally led you to make your statements.”

An interview with Rod Beckstrom on the board decisions is available from:
link.brightcove.com/services/player/bcpid17699847001?bctid=71571577001

Writing on the Internet Governance blog, Milton Mueller says he would give ICANN “an A for effort. But on substance? Give them an F. On the .xxx issue, the Board chose to ignore its independent review panel and refused to rectify what was officially determined to be unfair and discriminatory treatment. On the vertical integration issue, it issued a needlessly biased and poorly worded resolution that was an attempt to clarify things but probably did the opposite. True to form, the board devoted most of its attention to bending over backwards to accommodate trademark interests at the expense of market diversity, as most of the resolutions passed refer to various aspects of how to protect trademark owners from the horrifying prospect of letting people register names under new TLDs. And in response to complaints that it had set the fee bar for new gTLDs too high, the Board issued a vague instruction to its Advisory Committees and Supporting Organizations ‘develop a sustainable approach to providing support to applicants requiring assistance in applying for and operating new gTLDs.'”

For more of Milton Mueller’s analysis of the outcomes of the ICANN meeting in Nairobi, check out:
blog.internetgovernance.org/blog/_archives/2010/3/12/4478733.html