Harriet Balloch Rob Deans June 25 2012 Launch of non-Latin script IDNs prompts review of brand owners' strategies Clyde & Co LLP | Intellectual Property - International Harriet Balloch, Rob Deans Intellectual Property IntroductionApplications for new stringsLocal language strings (IDNs)Impact of top-level IDNsTiming and processesIntroductionOn June 13 2012 details of 1,930 applications for new top-level domain name extensions (or strings) were released by the Internet Corporation for Assigned Names and Numbers (ICANN), the body responsible for the management of domain names.Included in these applications are 116 non-Latin script strings, commonly known as internationalised domain names (IDNs). The introduction of these top-level IDNs will affect the way in which brand owners market their products, as the Internet becomes more accessible to those that are literate only in Arabic (or in another language which does not use Latin characters).With over 200 million native Arabic speakers and over 800 million native Chinese speakers, the impact on brand owners that wish to communicate with a global audience will be very significant. Brand owners should review their trademark registration and protection strategies to ensure that they have appropriate protection for foreign language versions of their key trademarks.Applications for new stringsThe introduction of new top-level strings is set to expand the existing infrastructure of the Internet from 22 top-level strings (including '.com' and '.org') to many hundreds, including:IDN strings (eg, '.com' and other top level strings in Arabic, Chinese, Cyrillic and other non-Latin scripts);branded strings (eg, '.amazon', '.apple', '.citi' and '.mcdonalds');community strings (eg, '.bank', '.hotel', '.islam' and '.tennis');generic strings (eg, '.app', '.cloud', '.music', '.tickets', '.you' and '.weather'); andgeographic strings (eg, '.nyc', '.dubai' and '.abudhabi').Much of the commentary regarding the introduction of new top-level strings focuses on the decisions of international brand owners to apply (or not) for their own top-level domains (in the form of '.brand'). However, the strings applied for covers a much broader range than simply a number of specific brands, with IDNs potentially being one of the areas where the biggest impact will be felt.Local language strings (IDNs)An IDN is a domain name that contains non-Latin script characters, such as those used in Arabic, Chinese, Cyrillic or Japanese. It has been possible to register partial IDNs from as early as 1998 - these include non-Latin script characters before the dot and Latin characters after the dot (eg, 纯水.com). This was followed in 2009 by the introduction of country-level IDNs, such as 'السعودية.' ('.saudi') and 'امارات.' ('.emarat').However, unsurprisingly, the uptake of country-level IDNs has been relatively slow, presumably reflecting the fact that, even in the English language, brand owners often prefer to engage with users through top-level ('.com') websites, rather than at a country level ('.ae' or '.sa'). In the Middle East, it can be administratively time-consuming to register country-level domain names, which may also have played a role in the relatively low uptake of country-level IDNs.The launch of the new IDNs has the potential to shake up the way the Internet is navigated in non-Latin script languages. For example, a brand owner that wishes to reach an audience across the Middle East will be able to do so through a fully Arabic website, which includes a top-level Arabic language website address. Previously, the only option has been to communicate through a website with a 'traditional' '.com' address or through a country-level, Arabic language address (eg, 'امارات.' or '.emarat').Impact of top-level IDNsIt appears likely that the owners of the new top-level IDNs will compete to promote their IDNs with consumers and website operators alike and that over time one IDN (per language) will become more dominant than the others. In the interim, brand owners will need to decide whether to register domain names for:the specific IDNs that they anticipate will become the equivalent of '.com' in each non-Latin script; ormultiple IDNs, on the basis that only time will tell which IDN will become dominant.Regardless of which strategy is adopted, it is important for brand owners to review their trademark protection in Arabic and other non-Latin languages in order to ensure that enforcement action can be taken against the unauthorised use of their trademarks in other languages. This protection is likely to become increasingly important as the use of such languages becomes more prevalent following the introduction of IDNs (regardless of which IDNs are more successful).Timing and processesThe new strings are unlikely to be launched before mid-2013, as before the applications can be formally approved by ICANN they must first be subjected to a comments and objections phase. ICANN is taking steps to protect brand owners by requiring the companies that have secured rights to the new top-level domains to:implement a sunrise registration period to provide brand owners with a window of priority to register domain names before the registration process is opened to the public; andparticipate in a trademark clearing house to enable brand owners to record trademarks and receive notifications of proposed registrations of domain names which incorporate their marks.With potentially hundreds of new top-level strings available, it is unfeasible for brand owners to secure defensive registrations across all of these new strings. Brand owners should therefore focus their domain name registration strategy on the top-level domains that are most relevant to their businesses. For brand owners with a global or regional presence, a focus on IDNs may be appropriate.Brand owners should also ensure that they are in a position to take effective enforcement action in relation to the unauthorised use of local language translations and transliterations of trademarks. It is important in this context to note that, in many countries, the registration of an English language trademark does not automatically provide protection for the corresponding Arabic language mark.Securing trademark protection in Arabic and other non-Latin script languages is a key step for brand owners in being able to take effective action to prevent third parties from misusing their trademarks in foreign languages, whether as part of a domain name registration, on a website or in some other form.For further information on this topic please contact Harriet Balloch or Rob Deans at Clyde & Co by telephone (+971 4 331 1102), fax (+971 4 331 9920) or email ([email protected] or [email protected]).