Paul D. McGrady, Jr., on Internationalized Domain Names and Traditional Trademark Transliteration Preparedness
Sweeping changes in the domain name system are weakening the dominance of English-speakers over the Internet. Soon, domain names will be available in over a dozen local languages. Brand owners need to take action now to preserve their brand identities. And brand owners will increasingly seek to enter foreign markets by converting their trademark into local languages. Paul D. McGrady, Jr., author of McGrady on Domain Names, helps practitioners navigate this emerging area of domain name practice. He writes:
Internationalized Domain Names, or “IDN’s,” are non-ASCII character domain names that use one of eleven local languages currently being tested by ICANN [Internet Corporation for Assigned Names and Numbers]. The local languages are: Arabic, Persian, Chinese (simplified and traditional), Russian, Hindi, Greek, Korean, Yiddish, Japanese and Tamil. IDN’s can display characters, words, or phrases in these local languages, and the internationalized characters appear in both the top level domain (everything to the right of the “dot”) and the second level domain (the content immediately to the left of the “dot”). . . .
Trademark Transliterations are simply the conversion of a trademark from its native language into the foreign conceptual equivalent. These conversions have been in use for many years by brand owners seeking to enter a foreign market in a way that allows the local consumers to access the mark in local language.
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Country code top level domain name registries have already launched some IDN’s for their various local extensions. For example, in China the .com.cn domain name is available in local language. Generally speaking, ccTLD registries are much more independent of ICANN and its processes than are gTLD registries. As a result, it is highly possible that the initial commercial proliferation of IDN’s will occur in the ccTLD naming space first, followed closely by gTLD’s.
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For ccTLD registries, there is no guarantee of any sunrise period or other mechanism for the protection of consumers through recognition of pre-existing brands. ICANN, on the other hand, is considering a sunrise period for brand owners, yet the details of this process remain sketchy and ICANN’s various councils and boards are working to round out the details. A brand-friendly approach would be to accept ASCII marks as a basis for obtaining the corresponding IDN under the U.S concept of the Doctrine of Foreign Equivalents. However, given that the details of the sunrise process have yet to be finalized, a brand owner should not assume such will be the case.
(footnotes omitted)