Domain Names –
Intellectual Property Considerations
Property in a Multilingual Context .....................................................
Trademark Protection under International Law..................................
Trademarks in the Physical World ....................................................
Trademarks – The Office Perspective...............................................
Domain Names ........................................................................
Uniform Domain Name Dispute Resolution Policy (UDRP)...........................
of UDRP Internationalized Domain Name Cases.....................................
Raised by Internationalized Domain Name Cases
Uniformity in the UDRP....................................................................
LIST OF ANNEXES
Language Statistics on the Internet
Contracting Members of Pertinent International Intellectual
WIPO Arbitration and Mediation Center:
List of Internationalized Domain Name Cases
Trademark Office Practice and Procedure
3 to 5
45 to 46
The Internet has its
origins and its root in the United States, where it emerged in the
1950’s as an experimental system developed by the academic and
military research establishment. Since that time, and with the addition of the user-friendly
World Wide Web, the Internet has been transformed into a multifaceted
network for communication and commerce, whose purposes are as broad as
the Internet community that employs it.
As the number of users rises, to more than 460 million at the
so the culture of the Internet has changed.
From a predominantly Anglo-American background, with its content
expressed mainly in English, the Internet now supports myriad
expressions of many cultures and societies including, increasingly, some
of the 6,700 languages spoken in 228 countries around the world.
Currently only about
6% of the world’s population are online, still drawn from a
predominantly English-speaking background, with 48% of users being
non-native English speakers.
It is forecast, however, that by 2002, Internet users will be
predominately non-English speakers and by 2003, 66% of all Internet
users will be non-English speakers,
with the greatest expansion coming from Asia and Latin America.
It is also estimated that by 2003, at least one-third of Web
users will prefer to conduct their online activities in a language other
and by 2005 only a third of Internet businesses will use English for
This trend towards internationalization of the Internet is hardly
surprising, when it is considered that 92% of the world’s population
speaks a primary language other than English.
And, as Internet usage comes to reflect the diversity of the
world’s population, so will the proportion of non-English substance on
the Internet. Forecasters
predict that, by 2007, Chinese will be the number one language used on
the World Wide Web.
INTERNET AS A GLO
The Internet is a
global medium. In many ways, the domain name system (‘DNS’) has
always functioned globally. The
DNS serves to facilitate users’ ability to navigate the Internet by
mapping the user-friendly domain name to its corresponding numeric
Internet Protocol Number. A
domain name registration, whether in a generic top-level domain (gTLD)
or a country code top-level domain (ccTLD), provides a global presence
which ensures that the corresponding online address is accessible online
The language and
scripts upon which the DNS is based, however, have not changed to
reflect the Internet’s increasingly global character.
Up to now, the DNS mapping technology has functioned only using
Latin, also described as ‘Roman’, characters that are used to write
a number of languages, including English, French, German, Italian and
Spanish. The Internet
community now questions whether this functional limitation in the
addressing system is consistent with the global nature of the Internet
and, finding the answer to be ‘no’, is taking steps to overcome it.
In the current environment, the internationalization of the
language and characters in which domain names are expressed is only a
matter of time and technology. Several initiatives are currently underway to explore the
means by which this internationalization of the DNS can occur, although
none are yet definitive.
The transformation is
also reflected in the internationalization of the technical coordination
of the Internet and its DNS, within the changing structures of the
Internet Corporation for Assigned Names and Numbers (ICANN) and the
Internet Engineering Task Force (IETF).
The IETF is currently tasked with developing and specifying
standards for internationalized access to domain names, as discussed
below. In parallel, changes
can be seen in the expansion of the generic top-level domain space, with
the introduction of new gTLDs, and the deployment of new forms of
virtual identifiers, such as keywords, whose impact upon an
internationalized DNS is discussed below.
INTERNET DOMAIN NAME SYSTEM (DNS)
The DNS operates on
the basis of a hierarchy of names, with the top layer taken by the
generic top-level domains (gTLDs) and country code top-level domains (ccTLDs).
Until recently, there were seven gTLDs, comprising the ‘open’
or unrestricted gTLDs of .com,
.net, .org, and the restricted gTLDs of .int, .edu, .gov, and .mil.
At its meeting on November 16, 2000, the ICANN Board selected
seven new top-level domains to be introduced into the DNS, comprising
the ‘unsponsored’ gTLDs of .biz
(for business purposes), .info (unrestricted) and .name (for personal
names), as well as the ‘sponsored’ gTLDs of .aero (for the aviation
community), .coop (for cooperatives), .museum (for museums) and .pro
Agreements have already been reached between ICANN and the
registration authorities for .biz, .coop, .info, .museum and .name,
enabling them to become operational.
At the ccTLD level,
there are at present 243 ccTLDs, each of which bears a two-letter
country code derived from Standard 3166 of the International
Organization for Standardization (ISO 3166).
These domains are not uniform in their management or policies,
some are open such that any person or entity may register in them, while
others are restricted to persons or entities that satisfy entry criteria
(e.g., domicile or business presence in the country).
The administrative authority for each ccTLD, in theory, has
autonomy to determine the policies for domain name registration within
In addition to the
expansion of the DNS as described above, alternate addressing systems
have been developed, using keywords, for example, that use different IP
number-to-name mapping systems. These developments are distinct from the growth of alternate
roots that do not function using the existing DNS, as described below.
Property in a Multilingual Context
MULTILINGUAL TRADEMARK PROTECTION
UNDER INTERNATIONAL LAW
Contracting Party may require that an application contain some or all of
the following indications or elements:
a transliteration of the mark or of certain parts of the mark;
The Common Regulations under the
Madrid Agreement and Protocol address the translation and
transliteration into Latin characters of the mark forming the subject of
an international application. Rule 9 (4)(a)(xii) provides, inter
alia, that the application shall contain or indicate:
“where the mark
consists of or contains matter in characters other than Latin characters
or numbers expressed in numerals other than Arabic or Roman numerals, a
transliteration of that matter in Latin characters and Arabic numerals;
the transliteration into Latin characters shall follow the phonetics of
the language of the international application”.
In addition, Rule 9(4)(b)(iii),
provides for a translation into English or French of the mark.
The International Bureau will record and publish such
translations and transliterations.
Irrespective of the goods and/or services for which a mark is
used, is the subject of an application for registration, or is
registered, that mark shall be deemed to be in conflict with a
well‑known mark where the mark, or an essential part thereof,
constitutes a reproduction, an imitation, a translation, or a
transliteration of the well‑known mark, and where at least one of
the following conditions is fulfilled:
use of that mark would indicate a connection between the goods and/or
services for which the mark is used, is the subject of an application
for registration, or is registered, and the owner of the
well‑known mark, and would be likely to damage his interests;
use of that mark is likely to impair or dilute in an unfair manner the
distinctive character of the well‑known mark;
use of that mark would take unfair advantage of the distinctive
character of the well‑known mark.”
[Factors for Consideration]
(a) In determining
whether a mark is a well‑known mark, the competent authority shall
take into account any circumstances from which it may be inferred that
the mark is well known.
In particular, the competent authority shall consider information
submitted to it with respect to factors from which it may be inferred
that the mark is, or is not, well known, including, but not limited to,
information concerning the following:
the duration, extent and geographical area of any use of the
the duration, extent and geographical area of any promotion of
including advertising or publicity and the presentation, at fairs
or exhibitions, of
the goods and/or services to which the mark applies;
the duration and geographical area of any registrations, and/or
any applications for
registration, of the mark, to the extent that they reflect use or
recognition of the
the record of successful enforcement of rights in the mark, in
particular, the extent
to which the mark was recognized as well known by competent
the value associated with the mark.
(c) The above
factors, which are guidelines to assist the competent authority to
determine whether the mark is a well‑known mark, are not
pre‑conditions for reaching that determination. Rather, the determination in each case will depend upon the
particular circumstances of that case.
In some cases all of the factors may be relevant.
In other cases some of the factors may be relevant.
In still other cases none of the factors may be relevant, and the
decision may be based on additional factors that are not listed in
subparagraph (b), above. Such
additional factors may be relevant, alone, or in combination with one or
more of the factors listed in subparagraph (b), above.”
MULTILINGUAL TRADEMARKS IN THE PHYSICAL
TRADEMARKS – THE OFFICE PERSPECTIVE
In Germany, for example, the
Patent and Trademark Office will determine whether a foreign character
mark is distinctive by asking whether its
significance can be recognized by the local public.
The German courts have held that no special standard for
distinctiveness should be applied for foreign character marks. If
a foreign mark is found not to be distinctive, the trademark will not be
considered to be registrable as a constitute (descriptive) word mark,
but may be distinctive, and therefore registrable, as a figurative mark.
The WIPO Training Manual
‘Introduction to Trademark Law & Practice’ describes trademark
office practice in relation to applications referring to foreign scripts
and transliterations of trademarks.
The WIPO Manual describes the use of foreign scripts as
‘fanciful devices’ with regard to the ordinary consumers in that
territory. As a
consequence, depending on their graphic presentation and more than
ornamental effect, such marks are ordinarily regarded as distinctive and
consequently registrable. The WIPO Manual provides that in such circumstances, the
registrar may request a translation (as is the practice in Switzerland)
and/or transliteration (as is the practice in Thailand) of the trademark
in local script. The
registrar may then examine the foreign script marks by applying general
standards of ‘descriptiveness’, according to local procedure.
The application of this test will to some degree depend on the
likelihood of citizens of the country in question being able to
understand the foreign script.
Excerpts of manuals of trademark
practices and procedures followed by a number of industrial property
offices, insofar as they deal with applications for registration of
multilingual and foreign character trademarks, are extracted at Annex
IV. The procedures adopted
by each trademark office for processing applications relating to
multilingual trademarks clearly differ depending on national conditions,
local languages and the composition of the national population.
In Switzerland, for example, where French, German and Italian are
official languages, and a significant English-speaking population
resides, the Swiss Federal Institute of Intellectual Property states, in
relation to trademark applications:
important principle is that, due to the multilingual nature of
Switzerland, the assessment of whether a filed mark is in the public
domain or is of a deceptive nature, is always made on the basis of all
national languages. In
practice, descriptive marks in English are also rejected.”
INTERNATIONALIZED DOMAIN NAMES
Review within ICANN/IETF
As stated in the final Report of the Second WIPO Process,
the Internationalized Domain Name (IDN) Working Group was established by
the Internet Engineering Task Force (IETF) with the goal to “specify
the requirements for the internationalized access to domain names and to
specify a standards track protocol based on the requirements.”
Since that time, numerous commercial testbed operations have come
into being that, using various technologies, have begun operations in
pre-registering or registering internationalized domain names.
The IETF has not yet finalized standards for internationalized
domain names and, therefore, no internationalized domain names have yet
been added to the DNS zone file or become fully operational.
On September 25, 2001, the ICANN
Board passed a resolution which recognized “that it is important that
the Internet evolve to be more accessible to those who do not use the
ASCII character set,” and which stresses that “the
internationalization of the Internet domain name system must be
accomplished through standards that are open, non-proprietary, and fully
compatible with the Internet’s existing end-to-end model and that
preserve the globally unique naming in a universally resolvable public
At its meeting on March 13, 2001, the ICANN Board adopted a
resolution establishing an internal working group “to identify the
various internationalization efforts and the issues they raise, to
engage in dialogue with technical experts and other participants in
these efforts, and to make appropriate recommendations to the Board.”
The Internationalized Domain
Names Internal Working Group of the Board of ICANN (the IDN Working
Group), was established “[i]n order to promote better understanding of
the technical and policy issues surrounding the internationalization of
At its March 2001 meeting, in the context of discussions on
multilingual testbed operations, it was resolved “that the ICANN Board
urges participating registrars to handle registrations within the
testbed in a manner that protects the interests and expectations of both
domain-name holders and affected third parties.”
The June 2001 Status Report of the IDN Working Group described
the responses to surveys conducted on the technical and legal issues
raised by IDNs.
On the policy issues surveyed, the Group reported the following
1: What is your view of the
value of IDNs? Who will benefit from them?
Is there any empirical proof of these benefits? Who will IDNs
Respondents generally had a very positive attitude towards IDN.
They observed that most of the world’s population does not use
Latin script as its native script.
IDNs, accordingly, will increase access to and use of the
IDNs will increase access to this population by businesses and
organizations that now are constrained by Latin script domain names.
Respondents were not able to identify empirical evidence of these
positions, other than the large number of IDN registrations to date.
There are national variations in trademark law, but in many
countries the translation or transliteration of a mark could be
considered infringing if it is likely to confuse the public as to the
origin of the goods and services. Additionally,
in countries that recognize dilution, a translation or transliteration
could be considered dilutive. A
respondent indicated that this issue is addressed in Article 6bis
of the Paris Convention. JPNIC
observes that the translation or transliteration of foreign trademarks
into Japanese may result in a character string which infringes a
3: Will the existence of
IDNs increase the incidence of cybersquatting?
In what manner?
Most of the respondents observed that whenever new registration
opportunities arise, new opportunities for cybersquatting present
themselves. Some added
that IDNs were no more susceptible to cybersquatting than Latin
scripts. Others felt that
certain scripts to pose special problems.
According to JPNIC, some Kanji characters are very similar to
one another. Some
respondents noted that adding new scripts may pose a linguistic
challenge for trademark owners monitoring for violations of their
4: What measures can be
taken to minimize cybersquatting? Which
of the following measures is most important - a “sunrise” period for
pre-registration; a functioning WHOIS database; or a functioning UDRP
Some respondents felt all three measures were of equal
importance. Others opined
that an effective dispute resolution mechanism was the most important
measure, although the procedures may not necessarily conform to the
ICANN UDRP in its current form. At
least one respondent observed that sunrise measures were problematic
because they entangled the registries/registrars in the domain name
5: What groups within and
without ICANN should consider these policy issues?
How should these groups proceed?
The respondents generally supported ICANN’s consideration of
issues raised by IDNs. Some respondents hoped to see a vigorous IDN
working group in the DNSO, and the formulation of concrete
also encouraged cooperative efforts with MINC and other groups such as
IETF, CDNC, and JET.
6: What other legal and
policy issues are raised by IDN? How
should ICANN address them, if at all?
One respondent suggested that communication between registrars
and registries need to be improved.
Several respondents suggested review and possible modulation of
the UDRP. In particular,
ICANN should consider new dispute resolution providers capable of
handling IDN disputes. JPNIC
also noted that a particular script is often used in more than one
country, i.e., beyond the territory of a particular country code
UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY (UDRP)
Domain name disputes in the new
gTLDs, .aero, .biz, .coop, .info, .museum, .name and .pro, will be
subject to the UDRP. Already,
0.2% of the domain name cases filed with the WIPO Center stem from the
new .info TLD. In addition, most registry operators have developed, or are
in the process of developing, specific dispute resolution policies
designed to resolve disputes occurring during a start-up, or
“sunrise” phase, as described below.
Such mechanisms, which may in some instances condition the
applicability of the UDRP, aim to provide trademark owners with
additional options for the protection of their rights during the early
operation of these domains, including ‘sunrise periods’ and
trademark opposition procedures.
The .info TLD implemented a ‘Sunrise Registration
Period’ (July 25, 2001 – August 28, 2001), during which trademark
owners could file a domain name application before the general public
where that domain name was identical to the textual elements of a
trademark which had national effect prior to October 2, 2000.
Following this, a Sunrise Challenge Period (August 28, 2001 to
December 26, 2001) allowed persons to challenge sunrise registrations on
the grounds of lack of eligibility, using a Sunrise Challenge Policy (SCP)
administered by the WIPO Center. Since
the commencement of the Sunrise Challenge Period, the WIPO Center has
received approximately 800 .info challenges.
Open registration of names in .info began on September 12, 2001,
and the UDRP applies to all post-registration disputes.
The .biz TLD implemented a pre-registration protection
mechanism for trademark owners. During
this period (May 21, 2001 to August 6, 2001), trademark owners could
file a number of ‘IP Claims’ regarding a particular alphanumeric
string that is identical to their trademark, and the registration
authority will then notify the trademark owner if the claimed string is
registered as a domain name during the start-up period. Trademark
owners who filed an IP Claim have standing to initiate a dispute
settlement procedure under the Start-Up Trademark Opposition Policy
to claim transfer of the contested domain name, and may also initiate a
dispute under the UDRP to challenge any registration after the start-up
The .name TLD implemented a system by which trademark
owners had the opportunity to apply for a Defensive Registration during
phase I (August 15, 2001 to December 14, 2001) in order to reserve a
particular alphanumeric string and to block personal name registrations
that include the registered alphanumeric string at either the second or
the third level, or on both levels.
The registration authority also offers a NameWatch Service for
trademark owners, which allows a NameWatch registrant to monitor
registrations in the Registry TLD that correspond to the registered
string of the trademark. Trademark
owners may also initiate a dispute under the UDRP to challenge any
registration after the initial phase of registrations.
Registries that are restricted to
certain purposes will also provide special proceedings to resolve
disputes concerning compliance with their respective registration
restrictions. For example,
.biz, which is intended only for domain names that are or will be used
primarily for ‘bona fide business or commercial purposes’ has
implemented a Restrictions Dispute Resolution Policy (RDRP),
for disputes concerning violations of its registration restrictions.
In .name, open only to registration of personal names or names of
fictitious characters on the second or third level, registrations are
subject to an Eligibility Requirements Dispute Resolution Policy (ERDRP)
for disputes concerning compliance with registration restrictions.
In .museum, open only to museum institutions, a Charter
Eligibility Dispute Resolution Policy applies.
SURVEY OF INTERNATIONALIZED DOMAIN NAME CASES
e.g., D2001-1169 <홍콩상하이은행.com>
ISSUES RAISED BY
INTERNATIONALIZED DOMAIN NAME CASES UNDER THE UDRP
MAINTAINING UNIFORMITY IN THE UDRP
The European Community Trademark
Directive (First Directive 89/104/EEC of the Council, of 21 December
1988, to Approximate the Laws of the Member States Relating to Trade
Marks) is available at http://oami.eu.int/en/aspects/direc/direc.htm.
The European Community Trademark Regulation (Council
Regulation (EC) No 40/94 of 20 December 1993 on the Community trade
mark), is available at http://oami.eu.int/en/aspects/reg/reg4094.htm.
See also Christopher Heath and Kung-Chung Liu, eds., The
Protection of Well-Known Marks in Asia, (Kluwer Law
International, 2000) at Chapter 1, page 5.
The Interpretations of the Supreme People’s Court on Some Issues
Concerning Specific Application of Laws in the Trial of Civil Cases
Related to Disputes of Domain Names on the Computer Internet,
promulgated on July 17, 2001 in effect on July 24, 2001.
A German case involved the
trademark for ‘St Pauli Girl’
in Chinese characters, which was initially refused registration by
the national Patent and Trademark Office on the ground that the mark
was not distinctive, because the average consumer would not be able
to remember those characters. The
decision was reversed on appeal, it being held that it is not
possible to require a special standard of distinctiveness for
trademarks constituted by Chinese characters.
Decision of the German Federal Supreme Court of December 12,
1999 (reported in Markenrecht 3/2000, page 99).