GTLD: High cost of protecting trademarks

[ABBOTT Ken <Ken.ABBOTT@xxxxxxxxxxx>]

Dear ICANN,

I work for a technology company with a worldwide footprint of factories and 
customer service offices. We are medium-sized, at about 10,000 employees.

Since we have recently (June 2006) been created from the merger of two 
companies, we have struggled to get ourselves established under our new name. I 
have witnessed firsthand the cost in advertising and PR that it takes to create 
awareness of our new brand name.

Naturally a first step in this process was to protect our brand through the 
registration of the trademark wherever we do significant business, as well as 
registering our domain name in countries where we have a physical presence. 
Even so we have bumped up against unscrupulous competitors or partners who have 
registered our domain name in their local country when that country's rules 
allow for a first-come, first-serve type of registration. Countries like 
Norway, where we have an on-going problem, don't adhere to the common domain 
name dispute protocol, and we estimate that we will need to spend upwards of 10 
000 euros in legal fees to reclaim our domain name in sweden, norway and 
denmark simply because a one-time partner saw the opportunity to pre-empt our 
registration in these countries.

This is nothing new, and other companies have much greater horror stories I'm 
sure.

My concern with the generic TLDs is that we will now be throwing open the door 
to many more such opportunistic people. I believe that being the registrant of 
a TLD could be a business model in itself, irrespective of the service offered. 
After all, the cost of managing DNS services are very low compared with the 
typical $35/year, or more, fees that we must pay per domain. You are all too 
well aware of the phenomenon of domain registrars putting zero-cost options on 
certain domain names to protect them for themselves. I believe that there may 
be a serious profit motive inherent in creating spurious TLDs and creating the 
kind of land-rush phenomenon we see with every new TLD. My registrar recently 
gave me 2 reasons for registering .tel : all his other big accounts were doing 
it, and I should protect my trademark name because it is easier to prevent than 
cure.

The predictions are for "hundreds" of new top-level domains. Does that mean 
that my company, along with the tens of thousands of other companies around the 
world with investments in a worldwide brand, must be prepared to protect our 
trademark every time someone wants to start a new generic TLD? I don't think 
that your Module 5, section 7 goes far enough to protect legitimate brand 
owners. From my perspective I prefer the so called "closed" domains whereby I 
have to prove ownership of a trademark before being able to register. I know 
that when I am ready to do business in one of these places, I will be able to 
legitimately claim and use the associated domain name. Before that time, I am 
confident that no one else will be milking my investment in brand recognition 
for their personal profit.

I would urge you to put more teeth into the section that protects trademarks. I 
would suggest that all entities wishing to create a generic TLD be required to 
clear any second level names against a database of registered trademarks. As 
long as the person registering can show that they own a trademark somewhere in 
the world for that name, they are a legitimate candidate. Anyone who tries to 
register a trademarked name would be refused.

I'm sure it would be complicated to rule on spelling differences and use of 
hyphens, but at the very least the exact spelling as shown in the database 
could be protected.

Ultimately a domain name is worth whatever is invested to make it recognizable, 
either through advertising or the quality content which makes it rank well in 
Google and other search engines. But the generic TLD project as it stands risks 
aggravating the problem faced by companies like mine which must manage well 
over a hundred domains in order to protect one single brand. I'm not sure who 
the driving forces are behind this initiative, but certainly if I were to be a 
cynical registrar I would be pushing hard for it because it represents the 
potential to scare my clients into registering not just hundreds, but thousands 
of domain names they will never really use, and managing a portfolio of domain 
names like that looks like easy money to me.

Thank you for reading my comments,

Cordially,

Ken Abbott
Manager, Web Communications
Gemalto
Tel: +33 4 42 36 55 67 - +33 6 74 41 14 42
Fax: +33 4 42 36 50 97
BP 100
13881 Gémenos CEDEX
ken.abbott@xxxxxxxxxxx<mailto:ken.abbott@xxxxxxxxxxx>
www.gemalto.com<http://www.gemalto.com/>