[At-Large] Fwd: Re: [GTLD-WG] Trademark Clearinghouse procedures

Alan Greenberg alan.greenberg at mcgill.ca
Wed Aug 22 15:15:11 UTC 2012

Rudi also posted a message to the ALAC GTLD WG and I replied with a 
bit of the history.


>Date: Wed, 22 Aug 2012 10:22:48 -0400
>To: Rudi Vansnick <rudi.vansnick at isoc.be>, gTLD WG
>         <gtld-wg at atlarge-lists.icann.org>
>From: Alan Greenberg <alan.greenberg at mcgill.ca>
>CC: Staff At Large <Staff at atlarge.icann.org>
>Subject: Re: [GTLD-WG] Trademark Clearinghouse procedures
>This has been discussed since the start of the TMCH concept.
>The IRT said that the cost to TM holders should be "reasonable" but I
>believe it was silent on whether ICANN or Registries should contribute.
>The STI report said the "cost should be born by users" but was silent
>on who the users were, but the implication is both TM holders and
>Registries. The rationale was that if the TMCH did not exist, the
>registry would have to build a comparable system itself (although the
>registry could then absorb part of the cost or put it all on TM
>holders). The report was explicit that ICANN should not fund the CH
>nor should the CH provide funds to ICANN. The Registry SG and NCSG
>issues a minority opinion that TM should fund the entire cost.
>The final AG said "Costs should be completely borne by the parties
>utilizing the services. Trademark holders will pay to register the
>Clearinghouse, and registries will pay for Trademark Claims and
>Sunrise services. Registrars and others who avail themselves of
>Clearinghouse services will pay the Clearinghouse directly."
>At 22/08/2012 09:18 AM, Rudi Vansnick wrote:
> >Dear all,
> >
> >Yesterday, I've participated remotely to the TMCH 2-days meetings in
> >Brussels.  A very interesting meeting with many discussions
> >illustrating the TMCH solution is not yet in a consensus level.
> >However, the provider is selected and should start delivering
> >solutions. From the meeting I understood nothing has yet being
> >worked out and the community was asked for input / approval of
> >processes to implement.
> >
> >When reading through the Trademark Clearinghouse: Preliminary Cost
> >Model (version 1 June 2012) (see attached PDF) I was surprised
> >reading the following paragraph :
> >
> > > Services to Registries
> > > Initial implementation and fee discussions indicate that
> > registries will pay for access to the Clearinghouse database.
> > Further details are still being worked out; however, initial
> > estimates based on currently available information indicate that a
> > set-up fee of USD 7,000 - 10,000 will be due per TLD registry. The
> > set-up fee would cover Sunrise and Trademark Claims processes as
> > established by ICANN, as well as assistance in integration and
> > testing. Additional fees will be due in other circumstances such as
> > participation in other programs or ancillary services.
> >
> >Does this mean the registries do have to pay for the services that
> >are of benefit to the Trademark owners ? In the previous paragraph
> >is mentioned :
> >
> > > Services to Rightsholders
> > > The primary services offered to rights holders are: (1)
> > authentication as a trademark and (2) validation of proof-of-use.
> > The first establishes that rights information meets the criteria
> > for Clearinghouse inclusion and the second establishes that a
> > Clearinghouse record meets the standard for Sunrise eligibility as
> > described by ICANN, i.e., demonstration of use of the trademark. A
> > bundled fee is expected where these services are performed
> > together. Proof of use validation would also be available at an
> > individual price if such is requested subsequent to the original
> > submission of rights data for authentication.
> > > The bundled fee or price for these initial services
> > (authentication and validation) is expected to be less than USD 150
> > per submission. Annual renewal fees for Clearinghouse records are
> > expected at a percentage of the initial price. The low fee requires
> > that submissions be inexpensive and straightforward to process.
> > Complex circumstances and additional services will add to the cost.
> > > There may be additional charges if further scrutiny is required
> > (such as a re-submission due to errors in the original submission
> > or an appeal to the initial Clearinghouse determination). Also,
> > non-electronic submissions might be available at a higher rate in
> > order to cover handling costs.
> >
> >
> >As such I understand the Trademark owners just pay a very small fee
> >to get their name been protected while the majority of the cost is
> >covered by the registry, which in the end means the registrant will
> >pay for it !!
> >
> >At the other side, the registry (applicant) already invested
> >185.000$ at least and should now add to this amount at least 7000 $.
> >Was this foreseen in the Guidebook ? As far as I could see yet, it
> >wasn't. Does this mean that applicants could eventually be able to
> >withdraw with full reimbursement of their investment ?
> >
> >Just some thoughts and reflections after yesterday's meetings ...
> >
> >What's ALAC's position in this ?
> >
> >Rudi Vansnick
> >
> >_______________________________________________
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> >GTLD-WG at atlarge-lists.icann.org
> >https://atlarge-lists.icann.org/mailman/listinfo/gtld-wg
> >
> >Working Group direct URL:
> >https://community.icann.org/display/atlarge/New+GTLDs
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