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    Highlights of the ICANNWatch Archive
    (June 1999 - March 2001)

    This discussion has been archived. No new comments can be posted.
    ICANN opens forum on new TLD applications | Log in/Create an Account | Top | 22 comments | Search Discussion
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    You've got to feel for Gene Bolmarcich
    by WIPOorgUK on Wednesday April 07 2004, @02:36AM (#13321)
    User #3146 Info | http://wipo.org.uk/
    Poor old Gene Bolmarcich - he must be pulling his hair out over the .cat TLD.

    He seems to be one of those intellectually challenged trademark folks. You know - those who think that words can only belong to one business - the rest of world can go to blazes.

    Perhaps when the .cat TLD goes belly-up, the Caterpillar Tractor company can help - buy them out - now there is an idea ;-) ;-)

    Archive Article [archive.org]

    You've got to feel for Gene Bolmarcich. As trademark counsel at Caterpillar, in Peoria, Ill., Bolmarcich already spends huge chunks of his time as a watchdog, protecting the company's online brand—and its 600 registered .com, .net and .org URLs—from cybersquatters. Now, with two official new top-level domains—.biz and .info—set to go live this fall and dozens more popping up like weeds all over the Web, Bolmarcich may soon be overwhelmed.

    "It's a pain in the neck," Bolmarcich said about the opening of new domains. "If a company owns the .com, what advantage is it to own .biz? Caterpillar doesn't have any plans to use it in a different way. This is all about just, once again, protecting the trademarks."

    Bolmarcich and Caterpillar aren't the only ones feeling the pain. As TLDs (top-level domains) proliferate, corporate attorneys and domain name managers in IT and e-business groups are being forced to spend more time and money to register URLs they may or may not actually use and to defend those URLs from online predators and competitors.

    As the environment becomes more chaotic, experts say, e-businesses will increasingly need to take a much more structured, formal approach to protecting their online brands. That means creating cross-functional teams that can decide how aggressively a company should pursue registrations in new domains and whether their goal is simply to protect existing trademarks and brands or to possibly market new Web addresses to customers. It also means getting better control over policies and procedures for registering domain names and communicating them throughout the organization.

    .biz and .info are the first two of the seven new TLDs that have already been approved by the Internet Corporation for Assigned Names and Numbers, the Internet's official domain name overseer. But that's just the beginning. Outside of ICANN's purview, private companies are introducing alternative domains such as .shop and .free. One, New.net Inc., of Pasadena, Calif., has introduced 30 such extensions so far.

    At the same time, other new domains are gaining attention as some operators of the 243 country-code domains attempt to popularize their extensions and market them as general designations. All of those new domains mean more URLs for e-businesses to register and manage and more potential for disruption by cybersquatters.

    Even before the number of TLDs began to blossom, however, policing URLs and trademarks online was no easy task, particularly for e-businesses intent on protecting their online brands.

    Caterpillar was certainly one of those. Since the spring of last year, the maker of heavy machinery has retrieved about 50 domain names by sending cease-and-desist letters to companies registering names that came too close to its brand names, such as CAT. The company has retrieved almost 70 more by using ICANN's UDRP (Uniform Domain-Name Dispute-Resolution Policy), which began in December 1999 and allows court action or arbitration through organizations such as the World Intellectual Property Organization to resolve domain disputes.

    The names Caterpillar and CAT are particularly crucial, and protecting them probably comprises about 95 percent of Bolmarcich's work.

    And it's not just evil cybersquatters that Caterpillar and Bolmarcich must guard against. A common problem for Caterpillar is the use of its trademarks in the URLs and sites of its business partners, companies involved in selling parts and providing service to customers of Caterpillar's heavy machinery, Bolmarcich said.

    The company has maintained that its trademark should not be used in the domain names of dealers and other third-party companies. That means Bolmarcich has had to seek URL registrations overseas as well as in the United States. Although Caterpillar's activity in country codes has so far been a lower priority, the company has registered names in about 10 domains for countries such as Spain, Bolmarcich said. And now, with new domains springing up in the United States, Bolmarcich said he will need to redouble his efforts.

    "We pretty much have every good domain name one could imagine having any marketable value, and we feel good about that," he said. "The bad news now is that they just threw .biz and .info at us, and now we have to register all these domain names ourselves or fight the same battle again in these new domain spaces."

    Caterpillar is in good company. The average Global 2000 company will have at least 300 name variants registered by this year, according to Gartner Inc., a consultancy based in Stamford, Conn. The introduction of new domain names will force many organizations to develop an overall strategy for registering many names in multiple domains, and that process could cost the typical large company as much as $90,000, said Ted Chamberlin, a Gartner analyst.

    Garry Anderson - Haverhill UK - Home Page [skilful.com] - WIPO Complaint Site [wipo.org.uk]
    [ Reply to This | Parent ]
    Should the UDRP apply to TLDs?
    by KarlAuerbach on Wednesday April 07 2004, @08:39AM (#13322)
    User #3243 Info | http://www.cavebear.com/
    You raise an intriguing point - should ICANN's new TLDs be subject to challange, and subsequent transfer or cancelation, under ICANN's own UDRP.

    Certainly ICANN's adoption of .biz (despite a pre-existing TLD by the same name) turns up numerous hits on the USPT0's web site.

    Same for "mobi" - there are preexisting trademarks.

    Same for "cat" and "post" and "aero" and ... well just about all of 'em.

    Perhaps ICANN ought to finally realize that the UDRP is a disaster, a supranational law created by the IP industry to expand their rights, made through a process that actively excluded other concerned parties.

    But even if ICANN doesn't have such a revelation, they ought to be willing to live by the rules they impose on others and allow TLDs to be challanged by ICANN's own UDRP processes.
    [ Reply to This | Parent ]

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