Today ICANN published the final Rights Protection Mechanism (RPM) Requirements for new gTLD registries,  that enables trademark holders to protect their rights during the Domain Name System expansion.

A set of trademark protections were developed by the ICANN community for incorporation into the New gTLD Program and include both trademark claims and sunrise services, which are required for all new gTLDs. These final RPM Requirements are part of all Registry Agreements and include practical details of implementing sunrise services and claims services processes.

A draft version of the RPM Requirements was published in April 2013 for community discussion and input. I

ICANN requested and considered input to this document on multiple occasions.

This final version reflects significant changes based on stakeholder input received during the ICANN meeting in Beijing in April, an open consultation conference call attended by more than 50 participants in April, comments provided by various individuals and stakeholder groups in May and June, continuing discussions during the ICANN meeting in Durban in July, and a formal public comment period during August and September.

The feedback received encompassed a range of views, and ICANN has carefully weighed the inputs from all stakeholders to arrive at a balanced outcome that supports the objectives of effective TLD launches with robust trademark protections.

Here are some of the highlights:

Sunrise Period. The Trademark Clearinghouse will provide various services to facilitate the Sunrise Periods (as defined in Section 2.2.1) of new gTLD registries (the “Sunrise Services”). One of the Sunrise Services is to allow holders of marks (“Trademark Holders”) that have been verified by the Trademark Clearinghouse (such marks, “Trademark Records”) and have met the eligibility requirements for the Sunrise Services as verified by the Trademark Clearinghouse (“Sunrise-Eligible Rights Holders”) an opportunity to register domain names in new gTLD registries prior to the start of General Registration (as defined in Section 3.2.1) of domain names in the TLD. For purposes of these TMCH Requirements, “General Registration” in a TLD is deemed to occur on the first day following the Sunrise Period in which domain names are generally made available to all registrants that are qualified to register domain names within the TLD.

2.1 Notice of Registration Periods.

2.1.1 If Registry Operator’s Sunrise policies permit Registry Operator to allocate, assign, designate or otherwise earmark (referred to herein as “Allocate”, “Allocated” and “Allocation”) or register any Sunrise Registration prior to the end of the Sunrise Period (i.e., Registry Operator MAY offer Sunrise Registrations (as defined in Section 2.2.1) on a “first-come, first-served” basis or any other time-based Allocation or registration process) (a “Start-Date Sunrise”), Registry Operator MUST provide the following information (collectively, the “TLD Startup Information”) to ICANN and the TMCH Sunrise and Claims Operator at least thirty (30) calendar days in advance of the date the Sunrise Period for the TLD is scheduled to start.

If Registry Operator’s Sunrise registration policies do not permit Registry Operator to Allocate or register any Sunrise Registrations prior to the end of the Sunrise Period (i.e., Registry Operator MUST NOT offer Sunrise Registrations on a “first-come, first-served” basis or any other time- based Allocation or registration process), Registry Operator MAY provide its TLD Startup Information to ICANN and the TMCH Sunrise Claims Operator at any time following the date of first delegation of the TLD to nameservers designated by Registry Operator into the root-zone (an “End-Date Sunrise”).

2.1.1.1 Confirmation that Registry Operator has completed Integration Testing.

2.1.1.2 Start date and end date for the Sunrise Period, and confirmation that the TMCH Sunrise and Claims Operator has accepted such start date and end date prior to Registry Operator providing the TLD Startup Information.

2.1.1.3 The complete Sunrise registration policies for the TLD, including all applicable policies described in Sections 2.3.1 and 2.3.6.

2.1.1.4 Start date and end date for all Limited Registration Periods (as defined in Section 3.2.4), if any.

2.1.1.5 Start date and end date for the Claims Period (as defined in Section 3.2.1).

2.1.1.6 Whether the Sunrise Period for the TLD will be a Start-Date Sunrise or an End-Date Sunrise.

2.1.4 Registry Operator MUST NOT submit TLD Startup Information to ICANN prior to the date of first delegation of the TLD to nameservers designated by Registry Operator into the root-zone.

2.2 Duration and Timing of Sunrise Period.

2.2.1 In the case of a Start-Date Sunrise, Registry Operator MUST provide the Sunrise Services for a minimum of thirty (30) calendar days prior to General Registration and, in the case of an End-Date Sunrise, Registry Operator MUST provide the Sunrise Services for a minimum of sixty (60) calendar days prior to General Registration (as applicable, the “Sunrise Period”).

Registration of domain names in the TLD during the Sunrise Period MUST be restricted to Sunrise-Eligible Rights Holders. All registrations of domain names that utilize a Signed Mark Data (“SMD”) file generated by the Trademark Clearinghouse are deemed “Sunrise Registrations” for purposes of these TMCH Requirements and the Agreement.

2.2.2 Registry Operator MAY provide Sunrise Services for a period in excess of the period required under Section 2.2.1, so long as the duration of the extended Sunrise Period is detailed in its TLD Startup Information.

2.2.3 Following commencement of the Sunrise Period, including any extensions thereto, Registry Operator MUST NOT shorten the duration of the Sunrise Period, but it MAY extend the duration of the Sunrise Period by providing updated TLD Startup Information to ICANN and the TMCH Sunrise and Claims Operator at least four (4) calendar days prior to the end date of the Sunrise Period included in the most recently provided TLD Startup Information.

Registry Operator MAY request that ICANN consent to an extension of the Sunrise Period on less than such four (4) calendar days notice, which consent will not be unreasonably withheld. ICANN will endeavor to promptly respond to any such request.

2.2.4 Except pursuant to a Launch Program (as defined in Section 4.5.2) or Registry Operator’s self-allocation or registration to itself of domain names pursuant to Section 3.2 of Specification 5 of the Agreement, Registry Operator MUST NOT allow a domain name to be Allocated or registered in the TLD to a registrant that is not a Sunrise-Eligible Rights Holder with a valid SMD file prior to the Allocation or registration of all Sunrise Registrations.

2.3 Sunrise Eligibility Requirements.

2.3.1 Registry Operator MAY impose the following types of restrictions to register a domain name in the TLD during the Sunrise Period and MAY
establish policies concerning the Allocation or registration of Sunrise Registrations (collectively “Sunrise Criteria”).

2.3.1.1 Registry Operator MAY apply restrictions relating to the underlying rights of a Trademark Record related to the purpose of the TLD (e.g., restrictions on the class of goods or jurisdiction of the Trademark Record that are related to the TLD).

2.3.1.2 Registry Operator MAY specify requirements that are not related to the scope of mark rights (e.g., if the TLD has a nexus or local presence requirement for domain name registrants).

2.3.1.3 Registry Operator MAY require that the information in a SMD file for a potential Sunrise Registration match the applicable Whois record for the registrant for the registered domain name.

2.3.1.4 Registry Operator MAY impose reasonable date restrictions relating to the date that a trademark underlying a Trademark Record or other applicable record was registered, court validated or protected by statute or treaty to prevent gaming of Registry Operator’s Sunrise Period.

2.3.2 If any information necessary to satisfy the Sunrise Criteria is not part of the SMD file, Registry Operator MUST cooperate with Sunrise- Eligible Rights Holders to allow Sunrise-Eligible Rights Holders to provide information necessary to satisfy the Sunrise Criteria.

2.3.3 If Registry Operator is operating a community-based TLD, as evidenced by the Agreement, Registry Operator MUST apply all community-based eligibility requirements during the Sunrise Period; provided, however, that Registry Operator MAY allow blocking or defensive registrations of domain names by Sunrise-Eligible Rights Holders that do not meet the community-based eligibility requirements if such domain names are not activated at any time in the DNS and such registrants are advised of such restriction.

2.3.4 If Registry Operator has submitted any public interest commitments pursuant to Section 2.17 of the Agreement, Registry Operator MUST
apply such public interest commitments to all registrations in the TLD.

2.3.6 Registry Operator MUST provide a mechanism to resolve disputes regarding its registration of Sunrise Registrations. Each Registry Operator MUST develop a Sunrise Dispute Resolution Policy (“SDRP”), which will allow challenges to Sunrise Registrations related to Registry Operator’s Allocation and registration policies, including on the grounds that the domain name that was registered does not match the Trademark Record on which the Sunrise-Eligible Rights Holder based its Sunrise Registration. Registry Operator MUST provide prompt notice of the outcome of an SDRP proceeding to the affected parties. To the extent applicable, ICANN MUST use commercially reasonable efforts to ensure that the TMCH Sunrise and Claims Operator cooperates with Registry Operator in effectuating Registry Operator’s SDRP.

2.4 Registration Mechanisms.

2.4.1 Registry Operator MUST NOT Allocate or register domain names during or in connection with the Sunrise Period unless a valid SMD file from the Sunrise-Eligible Rights Holder matching the applied for domain name was provided and the validation procedures described in the Trademark Clearinghouse functional specification (available at http://datatracker.ietf.org/doc/draft-lozano-tmch-func-spec/) (as updated from time to time, the “Functional Specification”) were performed.

2.4.2 If Registry Operator has implemented IDN variant registration policies for the TLD, Registry Operator MAY Allocate or register IDN variant labels generated from a label included in a valid SMD file during the Sunrise Period, provided that (i) such IDN variant registration policies are based on the Registry Operator’s published IDN tables for the TLD and (ii) such policies are imposed consistently
in the Sunrise Period, any Limited Registration Period, any Launch Program and during General Registration.

2.4.3 If Registry Operator reserves a domain name from registration in accordance with Section 2.6 of the Agreement and Specification 5 of the Agreement and thereafter (i) releases for Allocation or registration such reserved domain name at any time prior to the start date of the Claims Period, such domain name MUST be treated like any other domain name for any applicable Sunrise Period, Limited Registration Period, Launch Program or Claims Period, or (ii) releases for Allocation or registration such reserved domain name at any time following the start date of the Claims Period, such domain name MUST be subject to the Claims Services (as defined in Section 3) for a period of ninety (90) calendar days following the date Registry Operator releases such domain name for registration as long as the Trademark Clearinghouse (or any ICANN-designated successor thereto) remains in operation.

2.4.4 Registry Operator MUST NOT Allocate or register any domain names related to a Limited Registration Period until Registry Operator has completed all Allocations and registrations related to the Sunrise Period.

2.5 Sunrise Technical Specifications. Registry Operator MUST implement the Sunrise Services in accordance with the Functional Specifications.
3 Claims Period. The “Claims Services” provide both (i) notices to potential domain name registrants that a domain name they are seeking to register in a TLD matches a Trademark Record of a Trademark Holder that has been verified by the Trademark Clearinghouse (a “Claims Notice”) and (ii) Notifications of Registered Names (“NORNs”) (as such term is defined in the Functional Specifications).

The Claims Notice is intended to provide clear notice to the prospective domain name registrant of the scope of the Trademark Holder’s rights. A copy of the Claims Notice form is attached hereto as Exhibit A (the “Claims Notice Form”) and an example of a completed Claims Notice Form is attached hereto as Exhibit B. The Claims Notice Form defines the elements of the “Claims Notice Information” received from the TMCH Sunrise and Claims Operator’s Claims Notice Information Service (“CNIS”) that MUST be shown by the registrar to the potential domain name registrant. All Claims Notices MUST contain all of the Claims Notice Information to be valid. A potential domain name registrant may complete the domain name registration following the receipt of a Claims Notice. NORNs are provided by the Trademark Clearinghouse to eligible Trademark Holders. All registrations of domain names subject to Claims Services are deemed “Claims Registrations” for purposes of these TMCH Requirements and the Agreement.

3.1 Notice of Claims Period and Limited Registration Periods.

3.1.1 Registry Operator MUST provide ICANN with the start date and end date of its Claims Period (as defined in Section 3.2.1) as part of its TLD Startup Information in accordance with Section 2.1.1.5. Registry Operator MUST also provide ICANN with the start date(s) and end date(s) of Limited Registration Period(s), if any, as part of its TLD Startup Information in accordance with Section 2.1.1.4.

3.1.2 If Registry Operator makes any changes to the TLD Startup Information contained in Sections 2.1.1.4 or 2.1.1.5 prior to the start of the applicable Limited Registration Period or Claims Period, Registry Operator must provide ICANN and the TMCH Sunrise and Claims Operator at least four (4) calendar days notice before initiating a rescheduled Limited Registration Period or Claims Period to which such change relates.

3.2 Duration and Timing of Claims Period and Limited Registration Periods.

3.2.1 Registry Operator MUST provide the Claims Services for at least the first ninety (90) calendar days of General Registration (the “Claims Period”). The Sunrise Period and the Claims Period MUST be two distinct phases. The Sunrise Period and the Claims Period MUST NOT overlap.

3.2.2 Registry Operator MAY provide Claims Services for a period in excess of ninety (90) calendar days, so long as the duration of the Claims Period is detailed in its TLD Startup Information.

3.2.3 Following commencement of the Claims Period, including any extensions thereto, Registry Operator MUST NOT shorten the duration of the Claims Period, but it MAY extend the duration of the Claims Period by providing updated TLD Startup Information to ICANN and the TMCH Sunrise and Claims Operator at least four (4) calendar days prior to the end date of the Claims Period included in the most recently provided TLD Startup Information. Registry Operator MAY request that ICANN consent to the extension of the Claims Period on less than such four (4) calendar days notice, which consent will not be unreasonably withheld. ICANN will endeavor to promptly respond to any such request.
3.2.4 Registry Operator MAY establish additional periods during which it will accept domain name registrations following the Sunrise Period but prior to General Registration (a “Limited Registration Period”). The Sunrise Period and a Limited Registration Period MAY overlap, provided that Registry Operator MUST NOT Allocate or register any domain names in a Limited Registration Period until all Sunrise Registration have been Allocated and registered.

3.2.5 If Registry Operator offers a Limited Registration Period, Registry Operator MUST provide the Claims Services during the entire Limited Registration Period in addition to the standard Claims Period. For the avoidance of doubt, the first ninety (90) calendar days of General Registration must employ the Claims Services, regardless of any other registration period prior to the start of General Registration.
3.2.6 Following commencement of a Limited Registration Period, including any extensions thereto, Registry Operator MAY shorten or extend the duration of the Limited Registration Period by providing updated TLD Startup Information to ICANN and the TMCH Sunrise and Claims Operator at least four (4) calendar days prior to the end date of the Limited Registration Period included in the most recently provided TLD Startup Information. Registry Operator MAY request that ICANN consent to the extension of the Limited Registration Period on less than such four (4) calendar days notice, which consent will not be unreasonably withheld. ICANN will endeavor to promptly respond to any such request.

Matching

4.1.1 For purposes of the Sunrise Services and Claims Services, matching domain name labels will be generated for each Trademark Record in
accordance with the Trademark Clearinghouse’s domain name matching rules and made available to Registry Operator on the Domain Name Label List (as mentioned in the Functional Specifications).

4.1.2 Registry Operator MAY implement additional matching rules at the TLD level, provided that the Claims Services are still implemented for any Claims Registration satisfying such additional matching rules.

4.1.3 During the Claims Period, if Registry Operator has established IDN variant policies for Allocation of domain names in the TLD, Registry Operator must check all labels in a variant set against the Domain Name Label List before any domain names in the set are registered.

4.5 Launch Programs.

4.5.1 Pursuant to Section 3.2 of Specification 5 of the Agreement, Registry Operator MAY Allocate or register to itself up to one hundred (100) domain names (plus their IDN variants, where applicable) cumulatively over the life of the TLD.

Subject to further review and analysis regarding feasibility, implementation and protection of intellectual property rights, if a process for permitting registry operators to Allocate or register some or all of such one hundred (100) domain names (plus their IDN variants, where applicable) (each a “Launch Name”) to third parties prior to or during the Sunrise Period for the purposes of promoting the TLD (a “Qualified Launch Program”) is approved by ICANN, ICANN will prepare an addendum to these TMCH Requirements providing for the implementation of such Qualified Launch Program, which will be automatically incorporated into these TMCH Requirements without any further action of ICANN or any registry operator.

4.5.2 Registry Operator MAY, prior to the start date of its Sunrise Period, apply to ICANN for approval to conduct a registration program not otherwise permitted by these TMCH Requirements.

Such a registration program application could, for example, provide for authorization to implement programs set forth in Registry Operator’s application for the TLD, which, if set forth in reasonable detail in the application for the TLD, will carry a presumption of being approved, unless ICANN reasonably determines that such requested registration program could contribute to consumer confusion or the infringement of intellectual property rights.

If Registry Operator seeks ICANN’s approval of a program under this Section 4.5.2, and such requested registration program is substantially similar to an Approved Launch Program previously approved by ICANN under similar circumstances, such requested registration program application will carry a presumption of being approved, unless ICANN reasonably determines that such requested registration program could contribute to consumer confusion or the infringement of intellectual property rights. ICANN will develop a process for the submission and processing of applications for programs under this Section 4.5.2 and reserves the right to submit any application for registration programs submitted pursuant to this Section 4.5.2 for public comment.

All registration programs approved by ICANN pursuant to this Section 4.5.2 are referred to herein as “Approved Launch Programs” and, collectively with Qualified Launch Programs, as “Launch Programs”.

4.5.3 If registry operators that indicated in their applications for their TLDs that their TLD would be a geographic name (“Geo TLDs”) and representatives of the Intellectual Property Constituency recommend to ICANN the creation of a registration program that sets forth a defined list of labels or categories of labels that Geo TLDs MAY Allocate or register to third parties prior to or during the Sunrise Period, and ICANN accepts and implements such recommendation (“Approved Geo Launch Program”), registration program applications submitted by Geo TLDs pursuant to Section 4.5.2 for the Approved Geo Launch Program will carry a presumption of being approved, unless ICANN reasonably determines that such requested program could contribute to consumer confusion or the infringement of intellectual property rights.

TRADEMARK NOTICE

Here is the notices that a registrant of a new gTLD domain name will get if they attempt to register a domain that matches a term in the TMCH:

Exhibit A

You have received this Trademark Notice because you have applied for a domain name which matches at least one trademark record submitted to the Trademark Clearinghouse.

You may or may not be entitled to register the domain name depending on your intended use and whether it is the same or significantly overlaps with the trademarks listed below. Your rights to register this domain name may or may not be protected as noncommercial use or “fair use” by the laws of your country.

Please read the trademark information below carefully, including the trademarks, jurisdictions, and goods and services for which the trademarks are registered. Please be aware that not all jurisdictions review trademark applications closely, so some of the trademark information below may exist in a national or regional registry which does not conduct a thorough or substantive review of trademark rights prior to registration. If you have questions, you may want to consult an attorney or legal expert on trademarks and intellectual property for guidance.

If you continue with this registration, you represent that, you have received and you understand this notice and to the best of your knowledge, your registration and use of the requested domain name will not infringe on the trademark rights listed below. The following [number] marks are listed in the Trademark Clearinghouse:

1. Mark:

Jurisdiction:

Goods and Services:

International Class of Goods and Services or Equivalent if applicable:

Trademark Registrant:

Trademark Registrant Contact:

This domain name label has previously been found to be used or registered abusively against the following trademarks according to the referenced decisions:

Decision Number: UDRP Provider:

2 (). Mark: Jurisdiction: Goods and Services: International Class of Goods and Services or Equivalent if applicable: Trademark Registrant:

Trademark Registrant Contact: ). Mark: Jurisdiction: Goods and Services: International Class of Goods and Services or Equivalent if applicable: Trademark

Registrant: Trademark Registrant Contact

For more information concerning the records included in this notice, see .