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Protecting Trademark Rights for New gTLDs: ICANN Seeks Service Providers for Trademark Clearinghouse Operation | (Trademark Clearinghouse or "TMCH" Service Providers)

3 October 2011

Updated 17 November 2011
14 November 2011
10 November 2011

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 14 November 2011
Written responses due 25 November 2011 – 23:59 UTC
Extended to 28 November 2011 - 23:59 UTC
Public announcement of provider engagement 14 Februrary 2012

The deadline for responses is 28 November 2011 - 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 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