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Internationalised Domain Names and Trademarks: Be Aware
Internationalised Domain Names are coming and these have implications for brand owners (trademark holders). But while some fear the worst, brand owners should take each one on a case-by-case basis. Much like they do now with ccTLDs and gTLDs.
Internationalised Domain Names are domain names represented by local language characters. Such domain names could contain letters or characters from non-ASCII scripts (for example, Arabic or Chinese). Previously domain names could only include ASCII characters, or simply letters in the English alphabet (A-Z), numbers (0-9) and dashes.
In November 2009 ICANN commenced the IDN ccTLD Fast Track Process and to date has approved 16 IDNs in eight languages – Chinese (for China, Taiwan and Hong Kong), Arabic (Egypt, Palestinian Territory, Qatar, Saudi Arabia, Tunisia and United Arab Emirates), Russian (Russia), Sinhalese and Tamil (Sri Lanka) and Thai (Thailand). Domain names in these IDNs will become available in 2010 with some, such as Russia, having already commenced a sunrise registration period.
Brand owners may also wish to consider registering their trademarks in these IDN ccTLDs. However while some representative organisations for trademark holders are suggesting the registration of brands across all of the IDN ccTLDs is necessary, this is not the case.
Currently brand owners selectively register their trademarks across a limited number of gTLDs and ccTLDs and this should continue to be the case. If a brand has interests in a particular country or region where there is an approved language, it would be worthwhile considering this IDN ccTLD.
For brand owners, they need to be aware of protecting their trademarks in the countries and languages where IDNs are approved. Recognising trademark abuse, and cybersquatting, in IDNs such as Chinese or Arabic will sometimes be difficult.
However dispute resolution procedures, such as ICANN’s Uniform Dispute Resolution Policy, will be available and so cybersquatted domain names should be recoverable.
There will also be issues where domain names using IDNs are registered that may be deceptively similar to a trademark, either in spelling (depending on the language) or phonetically. It is possible that while an IDN could look very different to a domain name in ASCII characters, it could sound the same or similar when pronounced. In the case of disputes, it could be that the brand holder has to demonstrate that any disputed domain is sufficiently similar to their existing trademark.
Another option is enforcing rights to a trademark through trademark infringement action, often quite expensive and even difficult due to how laws are enforced. And that is if there are adequate laws.
More information on Internationalised Domain Names is available from the ICANN website at http://icann.org/en/topics/idn/.
For information on trademark issues for brand holders, contact eBrand Services or your lawyer.