ICANN Approves Registration of Internationalized Domain Names – Trademark Owners Should Take Note and Reconsider Online Policies

November 6, 2009

“At the very least, companies should consider the effects the internationalization domain names may have on their web presence and domain names, and how they can effectively benefit from this expansion while protecting their trademarks and names.”

The Internet Corporation for Assigned Names and Numbers (“ICANN”), the private corporation that governs domain names on the internet, has approved limited registration of Top Level Domain names (“TLDs”) (the characters which follow the “dot” in domain names) consisting solely of non-Latin characters. Under an experimental “Fast Track Process,” a limited number of national registries will be allowed to apply for additional country code TLDs (“ccTLDs”) using non-ASCII characters from their national languages – including Chinese, Arabic, Korean, Cyrillic, and others. Announced on October 30, 2009, the approval process for these new Internationalized Domain Name (“IDN”) ccTLDs will begin on November 16, 2009. This first step toward an internationalized internet should stimulate trademark owners to examine and formulate new strategies for protection of their intellectual property on the internet. See article “New Addresses to Make Use of Non-Latin Scripts” The New York Times, October 30, 2009 (revised October 31).

Until now, TLDs could only consist of ASCII characters – the 26 letters of the English alphabet, 0-9 numbers and the hyphen which make up the American Standard Code for Information Interchange character-encoding scheme. The new IDN ccTLDs, however, can consist of meaningful country indicators of between two and 63 characters in scripts such as Arabic, Chinese, Hindi, Cyrillic, or other non-ASCII characters. For the purposes of the Fast Track Process, eligible IDN ccTLDs cannot contain any ASCII letters or their notations, and both the territorial basis and the national language must be non-contentious.

Allowing registration of IDN ccTLDs is a significant acknowledgement of the international scope of the internet and is intended to make internet use more attractive and available to non-English speaking peoples. As explained by ICANN Chairman, Peter Dengate Thrush, “The coming introduction of non-Latin characters represents the biggest technical change to the Internet since it was created four decades ago. . . .the Fast Track Process is the first step in bringing the 100,000 characters of the languages of the world online for domain names.”

IDNs, however, also present new challenges for trademark and trade name owners. Many intellectual property owners and organizations fear that IDNs and the IDN ccTLDs will prove fertile ground for increased and new forms of cybersquatting, domain name hijacking, phishing attacks, homographic confusion (the use of similar-appearing but digitally different characters to create similar-appearing words), and domain name speculation. In fact, domain name registries, registration services, domainers, and trademark watch services all view these new domains as important potential sources of income – for increased registrations, domain name speculation, cybersquatting and cyber-infringement.

In response to the introduction of IDNS, intellectual property owners have requested automatic registration of existing domain names in the new IDN ccTLDs, sunrise registration priorities and conflict resolution programs. While it remains to be seen whether the registries empowered to register IDNs will adopt adequate rules and procedures to address intellectual property owners’ concerns, the new IDNs may not present as grave a problem as some commentators fear.

Non-ASCII characters have been registered as second level domain names (the characters to the left of the “dot”) since 2003, but their use has not generated an undue amount of conflict or controversy. The Uniform Dispute Resolution Policy (“UDRP”) has been applied successfully to resolve conflicts between non-Latin character registrations and Latin-character trademarks. Principles of trademark law have also been successfully employed to combat domain name and trademark infringement and cybersquatting by second level IDNs. These include application of the Doctrine of Foreign Equivalents (barring the registration of words which have different spellings or appearances but the same meaning as existing trademarks), and scrutiny of words for homographically similar characters (the use of ASCII or non-Latin characters which are different from but similar in appearance to Latin letters but are registrable because they have different digital values (as in the use of the number 1 in place of the letter l, or the use of Cyrillic p “Π” for Latin “n”, etc.)).

But the introduction of IDN TLDs -- especially if the Fast Track Process proves successful and ICANN permits the registration of IDN generic TLDs equivalent to the .com, .net, .org, .info, and other gTLDs including the proposed open registration gTLDs -- does pose some serious issues for IP owners. Companies with strong local presences or use of ccTLDs should consider whether to register in the new IDNs. The introduction of any new TLD increases the possibility that a company’s trademarks or name may be registered as domain names by third parties and companies should reconsider subscribing to domain name watch services. Finally, companies should establish or reexamine their internet policies concerning registering, policing, and challenging third party domain name registrations in both Latin and non-Latin characters, transliterations, and homographic or homonymic forms.

At the very least, companies should consider the effects the internationalization of the domain name space may have on their web presence and domain names, whether they should adopt their own non-Latin character trademarks and how they can effectively benefit from this expansion while protecting their trademarks and names. Since every case is different, companies should consult with their trademark or IP counsel to discuss how these changes may affect them and what steps they can take to minimize potential and actual conflict and infringement on the internet.

Marshall, Gerstein & Borun’s attorneys have extensive knowledge and experience in all areas of the internet and protection of IP on the internet and computers. Our attorneys were among the first involved in domain name challenges, transfers, and client education and remain in the forefront of internet and online issues. Contact us to discuss your company’s trademark, online and domain name needs, programs and issues.

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