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Building a Secure and Reliable Trademark Clearinghouse

by Fadi Chehadé | 7 November 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 Noncommercial 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!