29 Rights Protection Mechanisms

Prototypical answer:

gTLDFull Legal NameE-mail suffixDetail
.CIMBCIMB Group Sdn Bhdipmirror.comView

The answer to Question #29 is provided by the Service Provider, the back-end provider of registry services for this TLD.

Rights protection is a core responsibility of the TLD operator, and is supported by a fully-developed plan for rights protection that includes:

Establishing mechanisms to prevent unqualified registrations (e.g., registrations made in violation of the registry’s eligibility restrictions or policies);
Implementing a robust Sunrise program, utilizing the Trademark Clearinghouse, the services of one of ICANN’s approved dispute resolution providers, a trademark validation agent, and drawing upon sunrise policies and rules used successfully in previous gTLD launches;
Implementing a professional trademark claims program that utilizes the Trademark Clearinghouse, and drawing upon models of similar programs used successfully in previous TLD launches;
Complying with the URS requirements;
Complying with the UDRP;
Complying with the PDDRP, and;
Including all ICANN-mandated and independently developed rights protection mechanisms (“RPMs”) in the registry-registrar agreement entered into by ICANN-accredited registrars authorized to register names in the TLD.

The response below details the rights protection mechanisms at the launch of the TLD (Sunrise and Trademark Claims Service) which comply with rights protection policies (URS, UDRP, PDDRP, and other ICANN RPMs), outlines additional provisions made for rights protection, and provides the resourcing plans.

Safeguards for rights protection at the launch of the TLD
The launch of this TLD will include the operation of a trademark claims service according to the defined ICANN processes for checking a registration request and alerting trademark holders of potential rights infringement.

The Sunrise Period will be an exclusive period of time, prior to the opening of public registration, when trademark holders will be able to reserve marks that are an identical match in the .cimb domain. Following the Sunrise Period, the TLD operator will open registration to qualified applicants.

The Technical Service Provider will support handling data from the outcomes of the sunrise and land-rush periods.

The Sunrise period with be open for 30 days to allow eligible trademark owners to obtain domains corresponding to the trademarks they own that are related to the policy of the Registry.
There is no priority during the Sunrise period. A batching system is used for identical competing applications which are then allocated by auction.

The Registry will publish full details of its Sunrise policy and eligibility. What follows is an outline of the policy with some key definitions.

To be eligible to submit a REGISTRATION REQUEST under Sunrise, a Sunrise APPLICANT must:
(b) be related to the POLICY of the REGISTRY; and

Sunrise definitions
The policy will be based inter alia upon the following key definitions.

A trademark or service mark conforming to the SUNRISE ELIGIBILITY REQUIREMENTS (SERs).

Ownership of an ELIGIBLE trademark may mean owner, co-owner or assignee.
For an assignee, the PROVIDER may request appropriate evidence that the assignment has taken place, and meets the legal requirements to be an effective assignment in the jurisdiction in which the mark is registered.
For a co-owner, the PROVIDER may request appropriate evidence that the co-owners have joined in the application.
Any dispute will be decided upon by the PROVIDER.

An independent entity or entities appointed by the Registry to provide certain rights protection services which may include inter alia verification, validation, and dispute resolution related to eligibility of trademarks.

An application submitted by an ACCREDITED REGISTRAR on behalf of an APPLICANT to register a name in the TLD.

The REGISTRY will operate a Sunrise Dispute Resolution Policy either itself or via the PROVIDER full details and the fees for which will be published on the REGISTRY WEBSITE.

The policy will allow challenges based on the following grounds:
(a) at the time the challenged domain name was registered, the domain name REGISTRANT did not hold an ELIGIBLE trademark;

(b) the trademark registration on which the domain name REGISTRANT based its Sunrise registration is not ELIGIBLE;

(c) the domain name is not identical to the trademark on which the domain name REGISTRANT based its Sunrise registration;

(d) the REGISTRATION REQUEST which led to the award of the domain name was in some way incorrect, misleading or fraudulent.

These are cumulative.
(a) OWNERSHIP of a word mark registered in the Trademark Clearinghouse;
OR OWNERSHIP of a word mark of national or regional or international effect registered in one of the states or entities in the WIPO Standard ST.3, that is in full force and effect at the time of submission of the REGISTRATION REQUEST, and at the time of Registration of any awarded name, and for which acceptable evidence of USE in the class for which it is registered is provided;
OR OWNERSHIP of a word mark that has been court-validated;
OR OWNERSHIP of a word mark that is specifically protected by a statute or treaty currently in effect and that was in effect on or before 26 June 2008;

(b) a word mark which directly corresponds to the name in the REGISTRATION REQUEST;

(c) a statutory declaration or an affidavit signed by the APPLICANT:
(i) that the information provided is true, correct and complete;
(ii) that no pertinent information has been withheld;
(iii) that acknowledges the fact that if there is any information withheld, that it automatically results in the loss of rights in any domain name(s) acquired, or the loss of the right to seek to register same;
(iv) that the application is compliant with the relevant Sunrise requirements;

(d) provision of data conforming to the SUNRISE INFORMATION REQUIREMENTS sufficient to document rights in the trademark;

(e) is not a word mark that includes the STRING as a portion of the trademark;

(f) is not a trademark for which an application for registration has been filed, but is not actually registered;

(g) is not a trademark for which an application has lapsed, been withdrawn, revoked, or cancelled;

(h) is not an unregistered trademark including such common law marks;

(i) is not a U.S. state trademark or service mark or a U.S. supplemental registration;

(j) is not an international application for the registration of trademarks, made through the Madrid system, unless based on or have resulted in a registered trademark of national effect;

(k) is not intellectual property other than a word mark such as rights in a sign or name, including domain names, trade names, and appellations of origin.

(l) is not a trademark registration that came into full effect after the effective date of the Registry Agreement;

(m) is not a trademark registration that was applied for after the 1 May 2012 being the date at which ICANN announced the applications received.

One key objective of the SERs will be to facilitate marks registered and used in good faith and not merely as a means to register a domain name.

APPLICANTS in Sunrise must submit the following information, either in an ACCEPTABLE ELECTRONIC FORMAT or via a link to the relevant database of the trademark registry, as part of a REGISTRATION REQUEST:

EITHER 1: the Trademark name and its corresponding Trademark Clearing House identity number;

OR 2 all of the following:
(a) the trademark corresponding to the name to be Registered;
(b) the country, region, or organization found in WIPO STANDARD ST.3 in which the trademark is registered;
(c) the current registration number of the trademark;
(d) the date on which the trademark application was submitted
(e) the date on which the trademark was registered;
(f) the class or classes under the latest publication of the Nice system (or its equivalent) for with the trademark is registered; and
(g) the status of the APPLICANT being one of owner, co-owner, or assignee of the trademark.

USE. Acceptable evidence of use will be a signed declaration and a single specimen of current use, which might consist of labels, tags, containers, advertising, brochures, screen shots, or something else that evidences current use in the relevant jurisdiction, provided in an ACCEPTABLE ELECTRONIC FORMAT.

Ongoing rights protection mechanisms

Several mechanisms will be in place to protect rights in this gTLD. As described in responses to questions #27 and #28, measures are in place to ensure domain transfers and updates are only initiated by the appropriate domain holder, and an experienced team is available to respond to legal actions by law enforcement or court orders.

This gTLD will conform to all ICANN RPMs including URS (defined below), UDRP, PDDRP, and all measures defined in Specification 7 of the new TLD agreement.

Uniform Rapid Suspension (URS)
The Applicant will implement decisions rendered under the URS on an ongoing basis. Per the URS policy posted on ICANN’s Web site as of this writing, the Applicant will receive notice of URS actions from the ICANN-approved URS providers. These emails will be directed immediately to the Applicant’s support staff, which is on duty 24x7. The support staff will be responsible for creating a ticket for each case, and for executing the directives from the URS provider. All support staff will receive pertinent training.

As per ICANN’s URS guidelines, within 24 hours of receipt of the notice of complaint from the URS provider, the Applicant shall “lock” the domain, meaning the registry shall restrict all changes to the registration data, including transfer and deletion of the domain names, but the name will remain in the TLD DNS zone file and will thus continue to resolve. The support staff will “lock” the domain by associating the following EPP statuses with the domain and relevant contact objects:
ServerUpdateProhibited, with an EPP reason code of “URS”
ServerDeleteProhibited, with an EPP reason code of “URS”
ServerTransferProhibited, with an EPP reason code of “URS”
The Applicant’s support staff will then notify the URS provider immediately upon locking the domain name, via email.

The Applicant’s support staff will retain all copies of emails from the URS providers, assign them a tracking or ticket number, and will track the status of each opened URS case through to resolution via spreadsheet or database.

The Applicant’s support staff will execute further operations upon notice from the URS providers. The URS provider is required to specify the remedy and required actions of the Applicant, with notification to the registrant, the complainant, and the registrar.

As per the URS guidelines, if the complainant prevails, the “Applicant shall suspend the domain name, which shall remain suspended for the balance of the registration period and would not resolve to the original web site. The nameservers shall be redirected to an informational web page provided by the URS provider about the URS. The WHOIS for the domain name shall continue to display all of the information of the original registrant except for the redirection of the nameservers. In addition, the WHOIS shall reflect that the domain name will not be able to be transferred, deleted or modified for the life of the registration.”

Rights protection via the RRA

The following will be memorialized and be made binding via the Registry-Registrar and Registrar-Registrant agreements:

The registry may reject a registration request or a reservation request, or may delete, revoke, suspend, cancel, or transfer a registration or reservation under the following criteria:
a. to enforce registry policies and ICANN requirements; each as amended from time to time;
b. that is not accompanied by complete and accurate information as required by ICANN requirements and⁄or registry policies or where required information is not updated and⁄or corrected as required by ICANN requirements and⁄or registry policies;
c. to protect the integrity and stability of the registry, its operations, and the TLD system;
d. to comply with any applicable law, regulation, holding, order, or decision issued by a court, administrative authority, or dispute resolution service provider with jurisdiction over the registry;
e. to establish, assert, or defend the legal rights of the registry or a third party or to avoid any civil or criminal liability on the part of the registry and⁄or its affiliates, subsidiaries, officers, directors, representatives, employees, contractors, and stockholders;
f. to correct mistakes made by the registry or any accredited registrar in connection with a registration; or
g. as otherwise provided in the Registry-Registrar Agreement and⁄or the Registrar-Registrant Agreement.

Reducing opportunities for behaviors such as phishing or pharming

In our response to question #28, the Applicant has described its anti-abuse program.
Rather than repeating the policies and procedures here, please see our response to question #28 for full details.

With specific respect to phishing and pharming, it should be noted by ICANN that this will be a single entity TLD in which Applicant has direct control over each registrant (they are typically on staff or otherwise contractually bound) and how each registration may be used. Further, there will be no open registration period for this TLD, as it will never be an “open” TLD. Since all criminal activity (such as phishing and pharming) is precluded by the mission, values and policies of the registry operator (and its parent organization), criminal activity is not expected to be a problem. If such activity occurs due to hacking or other compromises, the registry operator will take prompt and effective steps to eliminate the activity.

In the case of this gTLD, Applicant will apply an approach that addresses registered domain names (rather than potentially registered domains). This approach will not infringe upon the rights of eligible registrants to register domains, and allows Applicant internal controls, as well as community-developed UDRP and URS policies and procedures if needed, to deal with complaints, should there be any.

The Service Provider is a member of various security fora which provide access to lists of names in each TLD which may be used for malicious purposes. Such identified names will be subject to the TLD anti-abuse policy, including rapid suspensions after due process.

Rights protection resourcing plans

Supporting RPMs requires several departments within the Applicant as well as within the Service Provider. The implementation of Sunrise and the Trademark Claims service and on-going RPM activities will pull from the 102 staff members of the engineering, product management, development, security and policy teams at the Service Provider and the Applicant. No additional hardware or software resources are required to support this as the Service Provider has fully-operational capabilities to manage abuse today.

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