The advent of InternationalisedDomain Names may cause you to re-think your domain name strategy.Your business may only trade in one or a few countries, but you may be considering building a presencein non-English speaking countries, thusexpandingthe markets you trade in internationally.
If you are considering this, you may give thought to registering You may also feel safer registering an internationalised domain name to avert the risk of cybersquatters registering a domain name containing your trade mark.
How Many Internationalised Domain Names Are Available?
The first Internationalised Domain Name Country Code Top Level Domains launched on the Internet were in Arabic script, but there are now 22 countries with applications in a fast track process for acceptance of their scripts.
Why Register an Internationalised Domain Name?
If you make your domain name and country code top-level domain names easy to understand for internet users who use different languages, you could capture more business in countries where a large number of internet users still type the non-Latin string in the browswer on their special keyboards which contain non-Latin characters. If your business already operates in those countries you stand a chance of gaining more market share.
Why Are Trademark Owners Concerned?
Trade Mark owners may want to protect their brand's reputation in markets they already trade in internationally from cybersquatters or protect their trademark from being registered by cybersquatters using their trademark in an internationalised domain name.
How Are Trade Mark Owners' Interests Protected?
Prior to each applicant country's IDN ccTLD being accepted trade mark owners will generally be given the chance to submit applications giving them priority to reflect their domain name for their trade mark. Thismeans trademark owners can register their trademarks in domain names which contain their marks and protect their intellectual property. Some trade mark owners were worried about cybersquatters registering a trade mark or brand name with aninternationalised domain namewhich corresponds to their trade mark.
As each country's registry has different timeframes for this sunrise period during which trademark owners can object to a particular internationalised domain name being registered, trademark owners need to be aware of the timeframes and procedures for objecting where they want to reserve their names.
How Are DisputesBetween Trade Mark Owners and Internationalised Domain Name RegistrantsResolved?
There are Arbitration Panels which have been resolving disputes over the control and use of trademarks on the internet under established policies and rules, as they can be very valuable in commerce. However the resolution of internationalised domain name disputes will be challenging and controversial. Many famous global brands have an interest in protecting their names and reputations in other countries.
There are different ways of litigating and resolving conflicts over domain names however the most common form of arbitration is through ICANN (The International Corporation of Assigned Names And Numbers), established in 2000. Disputes are resolved for a fee of approximately $1500 anddecided online through written submissions.
If a trade mark owning wanting to reclaim it's trade mark in a domain name which reflects it's trademark must prove each of the following to succeed under Article 4(a) of the UDRP (Uniform Dispute Resolution Policy):-
(i) the domain name is identical of confusingly similar to a trade mark in which the complainant has rights;
(ii) the registrant has no rights or legitimate interests in respect of the domain name and;
(iii) the registrant's domain name has been registered and used in bad faith.
All of the above factors must be proved for the complainant to prevail in a domain name dispute;
Disputes between brand owners and internationalised domain name owners are tricky when it comes to comparing the similarity between the a trademark is not in cyrillic characters and a domain name is.
There are a lot of legal decisions which contain principles for the resolution of these disputes, however deciding whether a registrant's domain name is similar or identical to a trademark owners name seems a bit more complex when it comes to comparing two domain names with non-Latin characters. There is a question whether similarity under paragraph 4(a)(i) can mean visual similarity, similarity in meaning and/or aural similarity?
The issue has recently arisen before for the giant motor company Porsche. In a recent case the Porsche won a dispute for a domain name nopwe.com, which is xn--e1arcf4b.com in punycode, which is anexact transcription of the lettering ofPorsche's trademark, translating in meaning to the word Porsche.
To display these characters on a computer screen, each component of the domain name that is not in ASCII (American Standard Code for Information Interchange) characters,has to be encoded by a scheme such as punycode.
The trade mark owner in the Porsche case had to prove to the Arbitration Panel that the Internationalised Domain Name was 'confusingly similar' to the trademark Porsche, as it clearly wasn't identical. The dispute created challenges for the Arbitration Panel deciding it under the UDRP rules when it came to judging whether the disputed domain name was either similar or identical to the complainant's trademark.In cases involving non-latin scripts, domain names won't necessarily be visually similar or identical to the Complainant's mark.
The Panel accepted Porsche's evidence that the domain name in contention was a transliteration of it's famous PORSCHE trademark.
It appears thatArbitration Panels will be influenced by the fact thata trade mark is famous and well known world-wide. For instance, Porsche submitted evidence of numerous international marks, according them priority in several countries, including Russia. Porsche didn't own a cyrillic trademark, but did own numerous non-cyrillic marks which were protected in countries like Russia.
In Porsche's case there had already been a number of previous cases which have been decided pursuant to the Policy involving the use of their mark. The Panel were persuaded that this, in and of itself, was an indication that the name was an attractive target for cybersquatters.
The Porsche case is illuminating to trademarks owners in that thetrade mark owner Porsche wassuccessful in asserting that the domain name was confusing similar to its Porsche mark.
Trademark owners should take note of theArbitration Panel's acceptance that internationalised domain names in punycode and non-ASCII transliterations are treated as one and the same.
Therefore,if as a trade mark owner you forget toregister your internationalised domain name in a particular territory, you can still attempt to re-claim it if you find out later that a domain name incorporating your trade mark has been registered, The Domain Name Arbitration Panels have held that internationalised domain names and punycode translations are to be treated as one and the same under the UDRP Policy.
Even if your business hasn't registered the cyrillic mark equivalent of your domain name based on these decisions, you stand a good chance of recovering your trademark through the UDRP Policy under the ICANN procedure. Just because the domain name is in Cyrillic script and is not identical with the mark it will not prevent a Panel from finding the cyrillic or non-ACSII equivalent domain name is confusingly similar to your businesses' mark. The Panel determined that the real issue under 4(a)(i) of the UDRP Policy, is whether there is a likelihood of confusion in the mind of Internet users
CONCLUSION
Therefore the decisive question is whether an alphanumeric string consisting of the domain name in question sufficiently approximates the mark either visually or phonetically or in meaning, with result that the domain name is confusingly similar. When asking this question, the Panel is focused on the Initial confusion an internet user sees when they type the disputed domain name into the browser under para 4(a)(i).
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