New Internationalized Domain Names May Make Internet Trademark Enforcement Even More Difficult

As if protecting trademarks from domain name cyber-squatters was not already difficult enough, the recent announcement by the International Corporation for Assigned Names and Numbers (“ICANN”) regarding internationalized domain names (“IDNs”) may add to brand owners’ already significant headaches in this area.  On October 30, 2009, the ICANN board voted to approve, on a country-by-country basis, the registration of Country Code Top Level Domains ("ccTLDs") in non-Latin characters such as Chinese and Arabic.  While non-Latin characters have been available to domain users for some years, their use is not as prevalent because ccTLDs have only been available in Latin characters.  The move to extend non-Latin characters to ccTLDs is intended to support non-English speaking internet users who account for a significant portion of internet use worldwide.

ICANN is still developing the plan for implementation of the new policy, but it appears that ICANN is initiating the new domain registration process upon request by each country’s ccTLD administrator (or other relevant government authority).  ICANN offers a Fast-Track approval process for new character offerings, a process which is based on a number of guidelines and standards (i.e. the character offering must be based on an official language and must be meaningful in the territory).

Regardless of the particulars of the approval process, it seems inevitable that certain non-Latin characters, such as Chinese, will eventually be become more prevalent.  This fact will only add to the difficulty in protecting trademarks on the internet.  Brand owners already face many tough decisions when attempting to exploit and protect their brands online, including: How many top level domain (“TLD”) extensions should I purchase for my brand / trademark (.com, .net., .info, etc.)?  How many ccTLDs should I purchase and in which countries / jurisdictions?  Should I try to purchase commonly misspelled portions of my mark in order to avoid typo-squatting?  These are just a few questions brand owners must answer. 

Now, adding in the relative unknown of non-Latin characters will likely make things more difficult.  For instance, if non-Latin character use grows as expected under the new policy, brand owners may need to translate their mark into Chinese and then register it as a domain name, which may raise significant problems (especially for those that own fanciful trademarks).  If the brand owner’s trademark can be translated numerous ways, should they try to buy a number of domains to guard against infringement by a cyber-squatter?

The foregoing questions may not have easy answers, but being proactive in establishing a domain-buying policy with counsel will help avoid headaches and could streamline decision making on domain name issues.  Brand owners should consult counsel to develop or update a domain-purchasing strategy, and should seek recommendations for country-specific counsel in dealing with the issues that are sure to come with this expanded domain name policy.


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