英文硕士dissertation-国际知识产权法律在国际化域名系统中的研究-Territorialism versus Universali

法律英文硕士dissertationTerritorialism versus Universalism:International Intellectual Property Law in the Internationalized Domain Name System
Hong Xue
University of Hong Kong
This paper explores how the present international intellectual property law can be applied to
resolve the new conflicts arising from the internationalized domain name system (DNS), in
which non-Latin characters are permissible for direct use in domain names. It also analyzes
the two approaches to address this issue: one approach that territorializes the rights and
disputes on the borderless Internet, and another that universalizes the rights on the global
medium. By presenting a comprehensive study with respect to the relevant international
intellectual property law and practices, this paper attempts to research whether a balanced
solution to the conflict between the legal system and the technical system could be sought out
through maintaining the principle of territoriality of intellectual property protection, and it
also examines the alternative procedure built in the DNS for the resolution of intellectual
property controversies, namely the Uniform Domain Name Dispute Resolution Policy, and
assesses whether the alternative procedure that actually supersedes the principle of territoriality
is consistent with the existing international intellectual property law and interoperable
with the internationalized DNS.
Keywords internationalized domain names; territorialism; Uniform Domain Name Dispute
Resolution Policy
Introduction
The Internet, which is the basic global information infrastructure, was first started
and developed from ARPANET in the United States. Naturally, the Internet
acquired its primary language from its ‘‘homeland’’. However, English dominance
results in language barriers in non-English speaking countries and for non-English
speaking users. This has contributed to a digital divide between English and non-
English speaking countries or communities. In turn, in some non-English speaking
countries or communities this has limited the ability to fully maximize the Internet
for information access and economic growth.
A variety of technologies have been deployed to overcome the language barriers
on the Internet. The widespread use of the World Wide Web makes non-English
content available online. By the end of March 31, 2005, the number of the world
Internet users reached 888,681,131, and Asia has become the continent with the
largest Internet population.1 Not surprisingly, the culture of the Internet has
changed. By the end of March 2005, the top 10 languages used on the Internet
The Journal of World Intellectual Property (2006) Vol. 9, no. 1, pp. 1–24
r 2006 The Author
Journal Compilation r 2006 Blackwell Publishing Ltd 1
were English, Chinese, Japanese, Spanish, German, French, Korean, Italian,#p#分页标题#e#
Portuguese and Dutch.2 Since only 32.8% of the total Internet users are now using
English for online communication, other uprising languages are threatening the
predominant position of English on the Internet. As the Internet usage comes to
reflect the diversity of the world’s population, 92% of which speaks a
primary language other than English, so will the proportion of non-English
substance on the Internet. With the technological support, the Internet
content may now be expressed in 6,700 languages spoken in 228 countries around
the world. Multilingualism and internationalization are the irresistible trend of the
Internet.
The Internet naming system, which is only based upon Latin scripts, has
become the ‘‘last digital kilometer’’ that hinders non-English speaking users from
conducting Internet business in their native languages.
The domain name system (DNS) serves to facilitate users to navigate the
Internet by mapping the user-friendly domain name to its corresponding numeric
Internet Protocol Number. So far, the DNS mapping technology has been
functioning only in Latin (Roman) scripts, namely ASCII, which, ironically, stands
for ‘‘American Standard Code for Information Interchange’’. This functional
limitation is not consistent with the global nature of the Internet. Several technical
solutions, such as internationalized domain names, Internet keyword system, search
engines and directory services, have been developed and tested to explore the means
of internationalization of the DNS.3
The conflict between intellectual property rights and DNS is one of the most
controversial issues that emerges from the explosion of the Internet as a commercial
entity. Most prominently, intellectual property owners who attempt to extend their
exclusive right onto the Internet encounter the resistance of the Internet name
holders who firmly support the ‘‘first-come, first-served’’ basis of registry. Internationalization
of the DNS introduces added dimensions to the conflict between
intellectual property and the DNS, i.e. whether the owner of a trademark in Latin
terms or scripts may exclude a non-ASCII Internet name that is alleged to be a
translation or transliteration of the trademark.
This paper briefly goes through the mainstream techniques to internationalize
the DNS, and then explores how the present international intellectual property
law can be applied to resolve the new conflict arising from the internationalized
DNS. This paper attempts to research whether a balanced solution to the conflict
between the legal system and the technical system could be sought out through
maintaining the principle of territoriality of intellectual property protection and
also examines the alternative procedure built in the DNS for the resolution#p#分页标题#e#
of intellectual property controversies, namely the Uniform Domain Name
Dispute Resolution Policy (UDRP), and assesses whether the alternative procedure
that actually supersedes the principle of territoriality is consistent with the
existing international intellectual property law and interoperable with the internationalized
DNS.
r 2006 The Author
2 Journal Compilation r 2006 Blackwell Publishing Ltd
Hong Xue Intellectual Property Law in the Internationalized DNS
Internationalization of the DNS
The mainstream methods to realize multilingual access to the Internet content
currently available are internationalized domain names (IDNs), keyword system,
search engines, and directory services.
IDNs
IDNs are the domain names in character sets other than ASCII.4 As the direct and
significant development of the DNS, IDNs are believed to be the most fundamental
solution to internationalization. Currently, an IDN has the structure of ‘‘name in
local language’’ + ‘‘dot’’ + ‘‘Latin top-level domain’’ (e.g., ‘‘ .kr’’ or
‘‘ .cn’’). IDNs are now available in more than 350 languages, such as Chinese,
Korean, Greek, Japanese, Russian, etc.5
IDN service started ambitiously, but the market reaction was not positive, as
had been expected. The growth of IDNs is still considerably slower than Latinscript
domain names.6
The resolution for IDNs is through the client program installed on every
individual’s personal computer for the necessary function of converting the non-
ASCII code into ASCII code. The reliance on client programs constitutes to a
certain degree obstacles for flourishing the service.7 In addition, the structure of
IDNs is not fully internationalized, because a Latin top-level domain has to be
added at the end. This forces the users to change the character-input method, which
results in another inconvenience of IDNs.8
Through the effort of many sectors of the Internet community, the technical
coordination and standard-making regarding IDNs are underway within the
structures of the Internet Corporation for Assigned Names and Numbers (ICANN)
and the Internet Engineering Task Force (IETF).9
Internet keyword system
The internet keyword system is a kind of website address service that directs users to
an appropriate website when a keyword is typed into the Internet browser’s address
bar. This system is capable of handling characters written in various native
languages. Internet keywords can be in the format of the ‘‘name in local language’’
(e.g. ‘‘ ’’±or ‘‘ ’’). The keyword system was first commercialized in
Korea in 1999, and shortly after in China and Japan.#p#分页标题#e#
Technically, there are two types of keyword services. One requires a plug-in
program installed on the Internet browser software, while another modifies the
functions of the DNS system through the Internet service providers (ISPs).10
The market acceptance of keyword services in some countries is quite impressive,
but the system’s international standard is yet to be developed. Leading
companies in each country are determining their own service concepts independently.
Past failure presents us with the importance of an accountable, international
and multilateral organization with regard to the Internet naming services.11
r 2006 The Author
Journal Compilation r 2006 Blackwell Publishing Ltd 3
Intellectual Property Law in the Internationalized DNS Hong Xue
Directories and search engines
Both directories and search engines are the services enabled by various online
searching programs. The former utilizes pre-registered databases and the latter
utilizes dynamic databases that accumulate website contents. As far as DNS
internationalization is concerned, these technologies are not as influential as IDNs
and the Internet keyword system.
Applying international intellectual property law to the internationalized
DNS
New legal issues arise when internationalization of the DNS is not limited to
intellectual property controversies. For instance, the experts on network security
have raised concerns regarding phishing through IDNs. In the computer industry,
phishing is the act of attempting to fraudulently acquire sensitive information, such
as passwords and credit card details, by masquerading as a trustworthy person or
business with a real need for such information in a seemingly official electronic
notification or message (most often an e-mail or an instant message). It is a form of
social engineering attack.12 Certain browsers that support standardized IDNs
would allow companies to register domain names that appear to be the same in
different languages. That encoding scheme could enable an attacker to create a fake
website for a phishing scam. A spoofed link would seem to be a legitimate URL in
the address bar of affected browsers—Opera, Apple Computer’s Safari, and the
Mozilla and Firefox browsers from the Mozilla Foundation. But instead of taking
the victim to the trusted site, the link would lead to a phony website with a domain
rendered as the same address under the IDN process. There are now many ways to
display any domain name on a browser, as there are a huge number of character sets
that look very similar to Latin characters.13 In the case of IDN phishing, the civil
actions against trademark infringement or passing off seem trivial. Only criminal
sanctions can safeguard the public interest and thus effectively address the Internet
users’ serious concern of being phished. In the United States, the Anti-Phishing Act#p#分页标题#e#
of 2005 was introduced to the Senate on March 1, 2005. The Bill proposes that those
criminals who create fake websites and spam bogus e-mails in order to defraud
consumers could be fined up to US$250,000 and subject to up to 5-year imprisonment.
This paper, however, will limit its coverage to intellectual property issues,
most particularly to the conflict between trademark right and the names
registered with the internationalized DNS (hereafter ‘‘non-ASCII Internet names’’),
such as IDNs and Internet keywords.14 Given that most cross-languages/scripts
disputes inherently have a cross-border nature, it is interesting to explore
how domestic laws interact with the international rules and how a trademark
right that is characteristic of territoriality fights with the names on the borderless
Internet.
r 2006 The Author
4 Journal Compilation r 2006 Blackwell Publishing Ltd
Hong Xue Intellectual Property Law in the Internationalized DNS
Global medium, territorial right
The recent trend towards globalization and the increase in world trade has
accelerated the internationalization of the intellectual property system and heightened
the importance of trademarks and other identifiers. The advent of
e-commerce in an online environment furthers this trend, due to the role that such
identifiers play in developing consumer awareness and trust towards brands that are
newly emerging and lack the conventional bricks and mortar foundations.
However, when optimistic intellectual property owners attempt to extend their
exclusive rights onto the global medium—the Internet—they encounter an insurmountable
barrier in the intellectual property system, i.e. territoriality.
Intellectual property rights are strictly territorial. So are the intellectual
property laws. The international intellectual property laws impose the principle
of national treatment supplemented by minimum rights, as well as the principle of
the independence of rights. That is, foreign treaty claimants enjoy the same rights as
nationals of a treaty country, unless they are entitled to more extensive minimum
rights, and the rights in one state do not depend on those in others.15
The history of intellectual property law reflects the development of the
territorialist approach. This approach is based on the idea that some common
ground should be found among nations with diverse approaches to the content and
societal purposes implicated by the particular issue under scrutiny.16 One of the
earliest examples is the rejection of the suggestion by the German delegates to the
1883 intergovernmental meeting to form the Berne Convention that a uniform
international copyright law be established to substitute the principle of national
treatment. In the subsequent draft, the universalist approach dropped away in favor#p#分页标题#e#
of the territorialist approach that would allow more countries to accede to the
Convention.17
Therefore, a global intellectual property right across all different jurisdictions is
merely in the imagination of the right owner. Canadian trademark law governs
distribution of trademarked products in Canada, even where infringement litigation
was initiated in a US court by a US plaintiff. Infringement of an architectural
copyright by unauthorized construction of a building in Rotterdam implicated
Dutch copyright law, even where plaintiff and defendant were English residents and
original plans were drawn in London.18
Although territorial intellectual property laws are not in harmony with the
global network, the principle of territoriality has neither been broken through nor
abandoned.19 In the context of the internationalized DNS, the laws’ territorial
characteristic becomes even more prominent. Given that both non-ASCII domain
names and keywords are registered in native languages other than English so as to
target specific language communities in certain countries, whether their registrations
would be conflicting with the pre-existing intellectual property rights can
hardly be duly assessed unless in the context of those languages and in the territories
in which those languages are used.
r 2006 The Author
Journal Compilation r 2006 Blackwell Publishing Ltd 5
Intellectual Property Law in the Internationalized DNS Hong Xue
International laws and practices under the principle of territoriality
The international intellectual property system has traditionally provided for the
protection of rights across different languages and different character scripts, most
particularly in the field of trademark law, as part of the wider concept of protection
against unfair competition.
The principal international agreements and instruments that address the
protection of trademarks are the Paris Convention for the Protection of Industrial
Property (Paris Convention), the Agreement on Trade-Related Aspects of Intellectual
Property Rights (TRIPS Agreement), the Trademark Law Treaty (TLT) and
the Madrid Agreement Concerning the International Registration of Marks and
related Protocol. In addition, the World Intellectual Property Organization (WIPO)
‘‘Joint Recommendation Concerning Provision on the Protection of Well-Known
Marks’’ and ‘‘Joint Recommendation Concerning Provisions on the Protection of
Marks and Other Industrial Property Rights in Signs on the Internet’’ provide
guidelines for the protection of marks (particularly well-known marks) at an
international level or on the Internet.20 These provisions have the purpose of
avoiding conflicts between trade and service marks across different languages, and
to provide specifically for registration and protection of marks in their translations#p#分页标题#e#
and transliterations.21 All through these provisions, the principle of territoriality is
strictly observed.
Recognition of well-known marks
In accordance with the Paris Convention, Article 6bis, ‘‘the countries of the Union
undertake, ex officio if their legislation so permits, or at the request of an interested
party, to refuse or to cancel the registration, and to prohibit the use of a trademark
which constitutes a reproduction, an imitation, or a translation, liable to create
confusion, of a mark considered by the competent authority of the country of
registration or use to be well known in that country as being already the mark of a
person entitled to the benefits of this Convention and used for identical or similar
goods’’.
Therefore, under the Paris Convention, only if a mark is considered by the
competent authority of the country to be well known is it a well-known mark in that
country, and should the issue of translations and transliterations be considered.
The TRIPS Agreement incorporates and extends the protection granted to wellknown
marks under Article 6bis of the Paris Convention to service marks and, in
line with the dilution protection principle, against use in relation to goods and
services that are not similar to those in respect of which the mark is registered.22
Since it provides the add-on protection for well-known marks on the basis of
the Paris Convention, the TRIPS Agreement does not deviate from the principle of
territoriality. In accordance with the TRIPS Agreement, Article 16(2), ‘‘in determining
whether a trademark is well known, Member shall take account of the
knowledge in the Member concerned which has been obtained as a result of the
promotion of the trademark’’.
r 2006 The Author
6 Journal Compilation r 2006 Blackwell Publishing Ltd
Hong Xue Intellectual Property Law in the Internationalized DNS
The TRIPS Agreement contains no definition or guidance as to what is meant
by the term ‘‘well known’’. The WIPO ‘‘Joint Recommendation Concerning
Provision on the Protection of Well-Known Marks’’, however, lists a number of
factors determining whether marks fall into that category: the degree of knowledge
or recognition of the mark in the relevant sector of the public; the duration, extent
and geographical area of any use of the mark; the duration, extent and geographical
area of any promotion of the mark, 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 mark; the record of successful enforcement of rights in the mark,#p#分页标题#e#
in particular, the extent to which the mark was recognized as well known by
competent authorities; and, the value associated with the mark. The Joint Recommendation
is not legally binding, but provides authoritative reference to the
competent authority of the relevant country.
Among the factors listed by the Joint Recommendation, relevance to specific
‘‘geographical area’’ is repeatedly highlighted for the recognition of a well-known
mark. With respect to the issue of translations or transliterations, relevance to
geographical area becomes even more prominent. In China, for example, consumers
in particular go mainly by Chinese character trademarks in making their purchasing
decisions. Therefore, a top priority task for foreign companies is to translate their
trademark into Chinese. This is well worth the effort needed to develop an
appropriate name the first time.23 A couple of cases show that despite the reputation
of the Chinese translations or transliterations among the Chinese consumers, the
foreign companies’ ‘‘original’’ marks can actually be unknown in the Chinese
market. In an interesting case, Pfizer Inc. v Shenzhen Wanyong Information Network
Ltd, the court held that the plaintiff’s registered trademark ‘‘VIAGRA’’ was not
well known among Chinese people, even though the plaintiff’s medicine was well
known by its informal Chinese name ‘‘ ’’(phonetically ‘‘WEI GE’’, meaning ‘‘a
strong brother’’ in Chinese). The court noted that the plaintiff had never promoted
its trademark ‘‘VIAGRA’’ in the Chinese market, while the formal Chinese
translation of the trademark ‘‘ ’’ (Wan Ai Ke) was widely publicized instead.24
Translations or transliterations of well-known marks
Whenever an IDN or a non-Latin keyword is believed to be the translation or
transliteration of a trademark in Latin terms or scripts, the trademark owner may
attempt to challenge that domain name or keyword registration in the context of the
international intellectual property law. However, whether a sign constitutes a
translation or transliteration of a well-known mark and whether the translation
or transliteration is liable to create confusion or indicate a connection with the wellknown
mark will depend upon the situation in the relevant territory.
A transliteration means to phonetically transform the trademark into another
set of characters with a pronunciation that represents the sound of the original, or
r 2006 The Author
Journal Compilation r 2006 Blackwell Publishing Ltd 7
Intellectual Property Law in the Internationalized DNS Hong Xue
its Latinized version; and, a translation means to literally or conceptually transform#p#分页标题#e#
the mark into another script or language with a meaning that represents that of the
original.
Internationally, a set of rules has been established with respect to the legal
protection of the marks in translated or transliterated forms. In accordance with the
Madrid Agreement Concerning the International Registration of Marks and the
Protocol Relating to that Agreement, 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 shall be submitted; the transliteration into Latin characters
shall follow the phonetics of the language of the international application. English
and French translations or transliterations will be recorded and published.25
The TLT, which aims to simplify and harmonize procedures of national and
regional trademark registration systems, also goes some way toward harmonizing
trademark office practice in dealing with multilingual trademark applications. In
accordance with the TLT, any contracting party may require that an application
contain a transliteration and/or translation of the mark or of certain parts of the
mark.26
Many domestic trademark offices now require that the trademark be translated
or transliterated in trademark administration. In Australia, where a trademark
includes words in a language other than English and/or characters other than Latin
characters, the applicant must file an English translation and/or transliteration in
support of the trademark application.27 Canadian trademark administration has a
similar requirement.28 The Office of the European Union also provides, where an
application is not in one of the official languages, that its contents, to the extent that
translation is required, should be sent to the Translation Center of the Bodies of the
Union as early as possible.29 In the United States, an application to register a mark
that comprises non-English wording should include a statement translating the non-
English wording; similarly, an application for a mark that comprises non-Latin
characters should include a statement transliterating such characters. The mark will
then be examined in line with the doctrine of foreign equivalents.30Appropriate
translations and/or transliterations approved by the examining attorney may be
printed on the trademark certificates.31
All above administrative measures implemented internationally, regionally or
nationally address the issue of translations and transliterations of foreign marks.
Regrettably, these administrative measures cannot resolve the problem the other way
around. Where a trademark in Latin terms or characters is challenging a non-ASCII
Internet name, the trademark owner will have to bear the burden of proof that the#p#分页标题#e#
non-ASCII Internet name contains the translation or transliteration of its mark,
unless the translation or transliteration of the mark in the native language has been
registered in that country. This is because the use of different languages may
distinguish the two forms of the trademark, so that the use of the original trademark
in non-Latin characters will not be deemed an infringement of the original owner’s
r 2006 The Author
8 Journal Compilation r 2006 Blackwell Publishing Ltd
Hong Xue Intellectual Property Law in the Internationalized DNS
rights. For example, the Chinese scripts are completely different from Latin characters;
thus, a trademark in Latin characters may not be protected against its use in
Chinese scripts, unless the Chinese-script mark is also registered. If the trademark has
been translated or transliterated in the process of trademark registration, the
translation or transliteration may be used as the prime facie proof.32
However, a trademark in Latin terms or scripts may not be eligible for
registration and/or protection in its directly translated or transliterated form according
to the national trademark law or procedure.33 For example, those generic English
terms, such as ‘‘BOSS’’ and ‘‘VOGUE’’, have been registered as trademarks in China.
However, the direct Chinese translations of these marks—‘‘ ’’ for ‘‘BOSS’’ and
‘‘ ’’ for ‘‘VOGUE’’—are apparently not acceptable for registration under the
Trademark Registration Examination Rules of the Chinese Trademark Office.34 In
these cases, it would be extremely unfair if the English trademark owners were
allowed to be deprived of non-ASCII Internet names, which are actually beyond the
control of the trademark rights. Therefore, trademark protection does have the
limitation, but the limitation well serves the purpose of striking the balance between
the private interest of trademark owners and the public interest at large.
Confusion
Another hurdle that prevents the English trademark owners from exercising their
power against the non-ASCII Internet names is the core concept of trademark
infringement—confusion or more flexibility for well-known marks, indication of
connection.35 In these circumstances, local language and culture must be taken into
account. For example, over 90% of the population speaks Cantonese—a dialect of
Chinese—in Hong Kong, a Special Administrative Region of China. The trademark
‘‘Haagen-Dazs’’ is transliterated into Cantonese as ‘‘ ’’. A Chinese domain
name ‘‘ .com’’ would create confusion with that Cantonese transliteration
among Cantonese-speaking people in Hong Kong. However, such a domain name#p#分页标题#e#
would not have the same effect in mainland China, where Mandarin—another
dialect—is spoken and the phonetic transliteration of ‘‘Haagen-Dazs’’ is
‘‘ ’’.
In the multilingual context, the degree of comprehension of a foreign language
or script in the relevant market of the marks is closely related to the public’s
likelihood of confusion. Thus, the owner of a mark that comprises English terms or
Latin scripts may not be able to prove the confusion created by the non-ASCII
Internet name that allegedly constitutes the translation or transliteration of the
mark in a native language in a certain territory, where the native people neither
understand nor know that mark in the original form. Furthermore, even if the
trademark owner takes the action against the holder of the non-ASCII Internet
name in an English-speaking country for the reason that the Internet name is
accessible in that country, the confusion, still, may not be established because it is
highly likely that those English-speaking people do not understand the Internet
name in non-English terms or scripts. All these issues have to be assessed territory
r 2006 The Author
Journal Compilation r 2006 Blackwell Publishing Ltd 9
Intellectual Property Law in the Internationalized DNS Hong Xue
by territory and cannot be settled uniformly. For example, the trademark administration
in the United Kingdom believes that a reasonable number of UK residents
know French, German, Italian and Spanish, but languages such as Dutch, Swedish,
Portuguese, Czech, Russian and Japanese are less well known in the country.36 In
Canada, where both English and French are the official languages, an Internet
name in Hebrew or Yiddish words or scripts may not be understood by the local
people.37 In Australia, if the foreign word is in a language that is not likely to be
known by a significant proportion of the Australian population, then there is no
ground for rejecting the application for trademark registration.38 By the same
token, an Internet name in the scripts that are not likely to be known by a significant
proportion of the Australian population should not be challenged by the trademark
in English equivalence.
Character variants
Deployment of non-ASCII Internet names is complicated, moreover, by the
complex ways in which language is employed throughout the world. In the multilingual
context, the same script or character set may be shared by many different
languages. Even in one language, the same script or character may have variants
that are either visually or phonetically different from one other.
Taking Chinese as an example, most Chinese-speaking populations are in the
mainland, Taiwan, Hong Kong, and Macao of China. Officially, simplified Chinese
characters are used in mainland China (encoded as GB 18030); in Taiwan, Hong#p#分页标题#e#
Kong and Macao, the official written scripts are traditional Chinese characters
(encoded as BIG5). In mainland China, the government endeavors to generalize the
use of simplified characters, whereas traditional characters are still used widely as
company names, signboards and calligraphic works. Most Chinese people can
recognize both sets of scripts for most simplified characters come from traditional
characters. To Chinese people, traditional and simplified characters are actually two
forms of calligraphy. A domain name in traditional character would be regarded as
equivalent to its corresponding simplified character version, and vice versa. Therefore,
the conversion between the traditional characters and the simplified characters
has to be prioritized in the deployment of Chinese-character domain names.39
Otherwise, a trademark owner would have to register in all the variant forms to
prevent confusion among the public. This problem, however, has been resolved
through technical measures. In CNNIC’s system, a simplified-character domain
name and its corresponding traditional-character domain name are treated as one
domain name. Thus, the registration of a simplified-character domain name would
automatically result in the registration of the corresponding traditional-character
domain name.40
These measures have now been accepted in the whole Chinese language
community.41 Given that Chinese, Japanese and Korean (CJK) languages share
many scripts or characters, technical measures have been developed to resolve the
CJK issue.42 ICANN highly praised the CJK model and urged other language
r 2006 The Author
10 Journal Compilation r 2006 Blackwell Publishing Ltd
Hong Xue Intellectual Property Law in the Internationalized DNS
communities to follow the CJK step.43 In the ‘‘Guidelines for the Implementation of
Internationalized Domain Names’’ published on June 20, 2003, ICANN requires
that top-level domain registries, in implementing the IDN standards, employ
language-specific registration and administration rules that are documented and
publicly available, such as the reservation of all domain names with equivalent
character variants in the languages associated with the registered domain name,
and, where the registry finds that the registration and administration rules for a
given language would benefit from a character variants table, allow registrations in
that language only when an appropriate table is available.44 Although character
variants in the same or different languages could be liable to create confusion
between non-ASCII Internet names and trademarks, the risk has been minimized
through the implementation of the technical measures.
Trademarks on the Internet
The WIPO ‘‘Joint Recommendation Concerning Provisions on the Protection of#p#分页标题#e#
Marks and Other Industrial Property Rights in Signs on the Internet’’ adopted in
March 2001 is the only ‘‘soft law’’ that provides guidelines on the application of
existing laws to legal problems resulting from the use of a sign on the Internet.45 The
Joint Recommendation is not legally binding but influential as the persuasive
authority.
The Joint Recommendation is aimed at providing a clear legal framework for
trademark owners who wish to use or protect their marks on the Internet and to
participate in the development of electronic commerce. It, of course, covers the
conflict between trademarks and Internet names, including non-ASCII Internet
names.
These provisions are, among those things, intended to determine whether,
under the applicable law, use of a sign on the Internet has contributed to the
acquisition, maintenance or infringement of a mark or other industrial property
right in the sign, or whether such use constitutes an act of unfair competition.46
The basic idea behind the Joint Recommendation is that online industrial
property issues be treated in consistency with the offline issues, so that it would not
lead to a split of law between online uses and offline uses. Therefore, the principle of
territoriality should be applied to the technically borderless Internet.
Under the Joint Recommendation, not each and every use of a sign on the
Internet should be treated as taking place in the member state concerned, even
though the use might be accessible to Internet users based in that state; instead, only
use that has a commercial effect in that member state can be treated as having taken
place in that state and thus subject to the applicable law of that state.47
In accordance with the Joint Recommendation, the competent authority, in
determining whether use of a sign on the Internet has a commercial effect in a
member state, shall take into account, inter alia, the manner of use of the sign on the
Internet with the member state, including:
r 2006 The Author
Journal Compilation r 2006 Blackwell Publishing Ltd 11
Intellectual Property Law in the Internationalized DNS Hong Xue
(i) whether the sign is used in conjunction with means of interactive contact,
which are accessible to Internet users in the member state;
(ii) whether the user has indicated, in conjunction with the use of the sign, an
address, telephone number or other means of contact in the member state;
(iii) whether the sign is used in connection with a domain name, which is registered
under the ISO standard country code 3166 top-level domain referring to the
member state;
(iv) whether the text used in conjunction with the use of the sign is in a language
predominantly used in the member state;
(v) whether the sign is used in conjunction with an Internet location that has#p#分页标题#e#
actually been visited by Internet users located in the member state.48
In accordance with the Joint Recommendation, only if the use of a sign on the
Internet has a commercial effect in a member state shall the use be taken into
consideration for determining whether a right under the applicable law of that
member state has been infringed, or whether the use amounts to an act of unfair
competition under the law of that member state.49 The relevant provisions on the
liabilities and exceptions or limitations to the rights in that state should also be
applied.50
These guidelines provided by the Joint Recommendation to territorialize the
online uses of signs are very helpful in resolving the conflict between trademarks
and non-ASCII Internet names. In particular, the factors for determining commercial
effect in a member state incorporate the language consideration, i.e. whether the
text used in conjunction with the use of the sign is in a language predominantly used
in the member state. Thus, a domain name in Chinese characters could, prima facie,
indicate its connection with China in which Chinese language is predominantly
used, and possibly imply the commercial effect of the use in China.Whether the sign
is used in connection with a domain name registered under a country-code top-level
domain referring to a member state is also under the consideration for the territorial
commercial effect. Given that an IDN can be registered both under a generic toplevel
domain (e.g. .com, .net or .org) and under a country-code top-level domain
(e.g. .cn, .jp or .kr), the preference to register under a country-code top-level domain
referring to a member state could also contribute to the recognition of the
commercial effect in that state.
In addition to the practical value, the theoretical value of the Joint Recommendation
is that even on the borderless Internet, industrial property rights—
particularly trademark rights—still exist territorially instead of globally. It clarifies
that a sign protected in one single country in the world would not essentially grant
the right owner a global monopoly on the Internet.51 The Joint Recommendation
consistently adopts the territorialist approach, as other international intellectual
property laws do, indicating a correct direction to the resolution of the conflict
between trademark and non-ASCII Internet names. Unfortunately, such a wellbalanced
and thoughtful document has so far attracted little serious analysis, let
r 2006 The Author
12 Journal Compilation r 2006 Blackwell Publishing Ltd
Hong Xue Intellectual Property Law in the Internationalized DNS
alone being implemented nationally.52 On the contrary, the universalist approach is
popularized, especially through the widespread use of the UDRP.
Superseding territoriality?
The UDRP that derives its force from ICANN’s de facto control of the DNS is#p#分页标题#e#
implemented through the contracts between domain name registrants and registrars.
53 Anyone who wishes to have a domain name must acquire it from a registrar
who has the right to inscribe names in an ICANN-approved domain name registry
and agree to submit to ICANN’s UDRP upon the request of any aggrieved third
party who claims a superior trademark right against the registrant’s domain name.
The UDRP is a mandatory third-party beneficiary system applied to all the domain
names registered under any generic top-level domains (gTLDs).54 IDNs registered
under the gTLDs are also subject to the governance of the UDRP.
The UDRP proceeding is limited to the resolution of the disputes between a
trademark owner and a domain name holder. In accordance with the UDRP, to
secure a name transfer, a complainant must prove each of the following three
elements: (i) the respondent’s domain name is identical or confusingly similar to a
trademark or service mark in which the complainant has rights; (ii) the respondent
has no rights or legitimate interests in respect of the domain name; and (iii) the
respondent’s domain name has been registered and is being used in bad faith.55
Up to December 2004, 6,957 UDRP cases involving 11,536 domain names have
been filed before those ICANN-approved dispute-resolution service providers.56
Given that a large number of domain name disputes are resolved through the
UDRP procedure, the UDRP has been praised as an efficient, inexpensive
procedure for the resolution of disputes.57 On the other hand, the UDRP is strongly
criticized by domain name holders and many academics for undemocratic processe,
pro-corporation bias or flawed procedures.58
Despite the praises or criticisms, if the UDRP is merely considered as the policy
of the ICANN, a non-profit corporation registered in California and supervised by
the US Department of the Commerce, it would have very little importance to
international intellectual property law. In particular, the enforcement of the UDRP
is based entirely on private contracts, instead of law enforcement, and the UDRP
does not eliminate the availability of court proceedings for domain name disputes.59
However, if international intellectual property law were going to follow the UDRP
model, it would be worth serious concern. For instance, scholars have pointed out
that the UDRP may be signalizing that the classic, consensus-based model of
international intellectual property law making has been superseded on a number of
fronts. The developments are motivated by the need to allow the international
intellectual property law to respond more rapidly to technological and other
challenges.60
Apparently, the UDRP represents a substantial departure from traditional
international trademark law, which predominantly follows the principle of territoriality.#p#分页标题#e#
61 Traditionally, a trademark, even if well known, does not give its owner
r 2006 The Author
Journal Compilation r 2006 Blackwell Publishing Ltd 13
Intellectual Property Law in the Internationalized DNS Hong Xue
exclusive rights over every possible commercial use and in every country. The
sectoral and territorial principle backs up the idea that trademark protection best
achieves its purpose by limiting the reservation of rights in a name to the type of
goods and location where those goods are sold.62 The UDRP deviated from these
principles and thus literally abolished those limitations that serve to balance the
interests of different parties in the trademark system. In a UDRP proceeding, as far
as the complainant owns a registered trademark in any country, it satisfies the
threshold requirement of having trademark rights. The location of the registered
trademark and the goods and/or services it is registered for are irrelevant when
finding rights in a mark. Therefore, ownership of a registered trademark to which
the domain name is confusingly similar automatically satisfies the requirements
under paragraph 4(a)(i).63
Whether other requirements of the UDRP—in particular the requirement
concerning the respondent’s bad faith64—should be territorialized is also ambiguous
and subject to extremely different interpretations.65 Take paragraph 4(b)(iv) of
the UDRP as an example, which seems like a typical trademark prohibition against
using a mark in domain name in a way that caused commercial confusion.
However, it is highly suspicious how the ‘‘likelihood of confusion’’ could be
assessed in a global context. Not unexpectedly, this paragraph has spawned
inconsistent and idiosyncratic decisions.66
Would the UDRP apply to protect a trademark owner in a claim involving a
domain name containing the foreign script that has not been registered by the
trademark owner? Procedurally, the answer is ‘‘yes’’; but, substantively, the answer
is uncertain. Where an IDN is claimed to be a translation or transliteration of a
trademark, solution is subtly related to the language, culture and other extremely
territorial issues. It is dubious whether the UDRP that attempts to globalize
trademark rights can satisfactorily fulfill this task.67
According to the statistics published by the WIPO, 47 cases involving ‘‘non-
ASCII script’’ domain names in nine different languages have been decided.68
Interestingly, in all these cases, the critical issue of translations or transliterations of
trademarks has never emerged. All the trademarks involved are in the native terms
or scripts in which the domain names are registered (e.g. the trademark
‘‘ ’’ versus the domain name ‘‘ .com’’), or the same#p#分页标题#e#
scripts shared by different languages (e.g. the trademarks ‘‘ ’’, ‘‘ ’’ and
‘‘ ’’ in scripts shared in both Japanese and Chinese). Therefore, whether the
UDRP can resolve the problem of translations or transliterations of trademarks has
not actually been tested.
Even in these cases, whether the disputes were territorialized is very unclear.
For example, in the case ‘‘ .com’’, the complainant was the registrant of the
trademark ‘‘ ’’, but the panel ruled against the complainant because the Chinese
term ‘‘ ’’ has the meaning of ‘‘pre-history times’’, which should not be monopolized
by the complainant.69 Obviously, the sole panelist, who made the decision in
Chinese, consciously/subconsciously used knowledge of the Chinese language and
r 2006 The Author
14 Journal Compilation r 2006 Blackwell Publishing Ltd
Hong Xue Intellectual Property Law in the Internationalized DNS
culture to localize the dispute in the Chinese-speaking community, although the
UDRP does not contain any clear guidance on this issue.70
Conclusion
International intellectual property law features the principle of territoriality while
the Internet is inherently borderless. The tension of the two regimes is reflected in
the conflict between international trademark law and the DNS. The internationalization
of the DNS calls for the harmony between the two separate and conflicting
regimes. The measures to harmonize the two regimes can roughly be categorized
into two streams: (i) applying traditional legal principles through territorializing the
conflicts on the Internet, or (ii) privatizing and internationalizing trademark law by
blurring or even abolishing the territorial limit of trademark protection. These two
streams should have equal opportunity to be examined and experimented. However,
the first stream, to a large extent, is pre-emptively presumed controversial with
the nature of the Internet. On the contrary, the second stream, which has been
popularized through the UDRP, becomes gradually prevailing.
This paper, from the prospective of the non-ASCII Internet names, clarifies
that the territorial limit to trademark protection is not only applicable but
appropriate to the resolution of the relevant conflicts. Disputes arising from the
non-ASCII Internet names can and should be territorialized in the international
trademark law system. On the other hand, whether the universalist approach of the
UDRP is interoperable with international trademark law, and thus suitable to
resolve the disputes arising from IDNs, deserves careful and thoughtful scrutiny.
About the Author
Hong Xue, Ph.D., University of Hong Kong and Member, ICANN President’s#p#分页标题#e#
Advisory Committee on IDN, 4/F KK Leung Building, Faculty of Law, University
of Hong Kong, Pokfulam Road, Hong Kong; e-mail: [email protected]
Notes
1 By the end of March 31, 2005, the number of Internet users in Asia rose to 302,257,003,
which is 34% of the world Internet population; North America is in second place with
221,437,647 users, which is 24.9% of the world Internet population; Europe has
259,653,144 users, which takes up 29.2% of the total Internet population. See ‘‘World
Internet Usage and Population Statistics’’, at hhttp://www.internetworldstats.com/
stats.htmi.
2 See ‘‘Internet Users by Language’’, at hhttp://www.internetworldstats.com/stats7.htmi.
3 See the Asia Pacific Regional Internet Conference on Operational Technologies
(APRICOT), at hhttp://www.iak.ne.kr/nativename/2005/kyoto3.htmi.
4 See ‘‘Background of ICANN IDN Committee’’, at hhttp://www.icann.org/committees/
idn/i. ‘‘IDN’’ is a term created by ICANN and gradually accepted by the global Internet
community. Nonetheless, it has been criticized for deviating from its original meaning and
r 2006 The Author
Journal Compilation r 2006 Blackwell Publishing Ltd 15
Intellectual Property Law in the Internationalized DNS Hong Xue
function. Given that current Latin-script domain names have already been used
‘‘internationally’’, and non-ASCII domain names actually purport to serve the local
Internet communities whose native languages are not English, it might be more precise to
call these non-ASCII domain names ‘‘localized’’ domain names than ‘‘internationalized’’
domain names. See H. Xue, The Voice of China: A Story of Chinese-Character Domain
Names, Cardozo Journal of International and Comparative Law, 12 (Fall 2004).
5 The leading IDN provider Verisign introduced a ‘‘testbed’’ for IDN registrations in
November 2000 using the ‘‘RACE’’ encoding standard and has registered over a million
IDNs under this testbed. Since the Internet Engineering Task Force finalized a set of
standards for IDNs, Verisign has been in the process of converting all IDNs to the
Punycode standard to meet IDN RFCs. In December 2003, the IDN testbed went live
with the addition of over 350,000 Punycode IDNs to the .com and .net live registry
system, allowing them to resolve properly around the globe. At the end of April 2004,
Verisign will only support Punycode registrations, thus moving away from RACE
altogether. More information about IDNs can be found at hhttp://www.verisign.com/
nds/naming/idn/i.
6 In December 2003, the testing phase of the IDNs went live with the addition of over
350,000 multilingual domains to the .com and .net registries. As of January 1, 2004, the#p#分页标题#e#
.com registry contained 300,409 IDNs, whereas the .net registry had 79,630 IDNs,
representing around 1.25% of the total .com and .net domains. Data show that more than
78% of IDN domains are registered by companies in only three countries—Korea, United
States and Japan. Korea alone accounts for 141,447 domains, followed by the United
States with 84,402 domains and Japan with 72,193 domains. See ‘‘Special Report:
Distribution Analysis of Multilingual Domain Names (IDNs)’’, at hhttp://
www.hostlibrary.com/pdfview/view/178i.
7 To alleviate this problem, many people proposed to have a built-in IDN client program in
every browser that could contribute and assist to the deployment of the IDN service.
However, major browser companies, such as Microsoft, have not yet put up a clear
schedule for such an update, although there is wide expectation that it will be included in
the next version of the operating system.
8 In some countries, this inconvenience has been overcome. In China, the input methods
allow people to type out IDNs without shifting the input method. For example, press
‘‘Spacebar’’for Chinese characters and ‘‘Enter’’for ASCII letters. Through this method,
both ‘‘ ’’ (dot in Chinese language) and ‘‘.’’are recognizable in the Chinese-character
domain name system.
9 In October 2002, IETF approved the publication of the three documents that together
define internationalizing domain names in applications (IDNA), a standards-track
protocol. These documents are ‘‘IDNA (RFC 3490)’’, ‘‘Nameprep (RFC 3491)’’ and
‘‘Punycode (RFC 3492)’’. These standards convert foreign language characters into
Unicode, a computer industry standard, and then encode these characters in ASCII for
transmission over the Internet’s DNS. During the discussion phase of the IDN protocol’s
development, there were some competing ASCII-compatible encoding (ACE) schemes
proposed, but an agreement was reached eventually to standardize on the type of ACE
called ‘‘Punycode’’. On June 20, 2003, ICANN published ‘‘Guidelines for the
Implementation of Internationalized Domain Names’’. From March 2001, ICANN
started the consultation with respect to the policies regarding confirmation of the
r 2006 The Author
16 Journal Compilation r 2006 Blackwell Publishing Ltd
Hong Xue Intellectual Property Law in the Internationalized DNS
language code table, the decision to support multilingual top-level domains and
registration for script variants, etc. Currently, China, Japan, Korea, Hong Kong and
Middle East countries are actively participating in such activities. See H. Xue, The Voice#p#分页标题#e#
of China: A Story of Chinese-Character Domain Names, Cardozo Journal of International
and Comparative Law, 12 (Fall 2004).
10 For example, Netpia Inc. (Korea), providing keyword service entitled ‘‘Native Language
Internet Address (NLIA)’’, adopts the ISP technology. There are other keyword services,
such as JWord in Japan and CNNIC Internet Keywords in China, implemented through
browser plug-in software.
11 In the past, a company called RealNames had launched keyword service on a global scale
under the support of Microsoft. Microsoft then allowed built-in client function of
keyword service to the Internet Explorer browser. But the service was suddenly
discontinued due to partnership breakoff between RealNames and Microsoft.
Termination of the service created unaccountable losses to a number of innocent
customers and users.
12 The term was coined in the mid-1990s by hackers attempting to steal AOL accounts.
An attacker would pose as an AOL staff member and send an instant message to a
potential victim. The message would ask the victim to reveal his or her password, for
instance to ‘‘verify your account’’ or to ‘‘confirm billing information’’. Once the victim
gave over the password, the attacker could access the victim’s account and use it for
criminal purposes, such as spamming. E-Bay, Microsoft and many banks offering online
services have been typical targets. See Wikipedia, at hhttp://en.wikipedia.org/wiki/
Phishingi.
13 An example from the Schmoo Group makes this clear. It began by registering a domain
called ‘‘p?ypal.com’’. That ampersand-hash-number string in the middle defines a non-
Latin character, a Cyrillic ‘‘a’’, that appears in the IDN-enabled browser almost exactly
like a Latin ‘‘a’’, though very slightly wider and taller. Schmoo was able to obtain an
authentic Verisign certificate for ‘‘p?ypal.com’’. Your computer knows it as
‘‘p?ypal.com’’, Verisign certifies that it is ‘‘p?ypal.com’’. But you read it as ‘‘paypal.com’’.
See ‘‘Gone Phishing’’, at hhttp://www.pcplus.co.uk/opinion/default.asp?pagetypeid=2&
articleid=36198&subsectionid=381&subsubsectionid=77i.
14 There are other technologies that internationalize the DNS based on search engines,
instead of registration. Although search engine services do have implications for
intellectual property rights, and there have been many reported cases concerning the
conflicts between trademark rights and search engines’ advertising practices, such as
American Blind v Google, or Louis Vuitton v Google, the issues involved are not specific to
the internationalized DNS. Thus, this paper will only examine the stream of technologies#p#分页标题#e#
based on registration.
15 P.E. Geller, International Intellectual Property, Conflicts of Laws, and Internet Remedies.
In M. Bender, International Copyright Law and Practice (Looseleaf).
16 G.W. Austin, Valuing ‘‘Domestic Self-Determination’’ in International Intellectual
Property Jurisprudence, Chicago-Kent Law Review, 77 (2002).
17 S. Ricketson, The Berne Convention for the Protection of Literary and Artistic Works:
1886–1986, Center for Commercial Law Studies, Kluwer, 1987.
18 See G.W. Austin, Valuing ‘‘Domestic Self-Determination’’ in International Intellectual
Property Jurisprudence, Chicago-Kent Law Review, 77 (2002), which cited the cases of
r 2006 The Author
Journal Compilation r 2006 Blackwell Publishing Ltd 17
Intellectual Property Law in the Internationalized DNS Hong Xue
Vanity Fair Mills, Inc. v T. Eaton Co., 234 F. 2d 633 (2d Cir. 1956) and Pearce v Ove Arup
P’ship, [1999] 1 All E.R. 769 (C.A.).
19 Many commentators have pointed out the conflict between the territorial rights and the
global medium. See R.T. Nimmer, Licensing on the Global Information Infrastructure:
Disharmony in Cyberspace, Northwestern Journal of International Law & Business, 16
(1995); P.E. Geller, Intellectual Property in the Global Marketplace: Impact of Trips
Dispute Settlement, International Law, 29 (1995).
20 The WIPO ‘‘Joint Recommendation Concerning Provisions on the Protection of Well-
Known Marks’’ was adopted at the Assembly of the Paris Union and the General
Assembly of the WIPO on September 20–29, 1999. The WIPO ‘‘Joint Recommendation
Concerning Provisions on the Protection of Marks and Other Industrial Property Rights
in Signs on the Internet’’ was adopted at the Assembly of the Paris Union and the General
Assembly of the WIPO on September 24–October 3, 2001. Both documents provide a set
of guidelines for the protection of trademarks and have the status of soft law.
21 S.P. Ladas, Patents, Trademarks and Related Rights: National and International
Protection, Harvard University Press, 1975.
22 See the TRIPS Agreement, Articles 2, 16.
23 Examples of successful translations or transliterations are ‘‘ ’’ (baishi) for ‘‘Pepsi’’,
‘‘ ’’ (duoleshi) for ‘‘Dulux’’, ‘‘ ’’ (ximengsi) for ‘‘Siemens’’ and ‘‘ ’’
(kekoukele) for ‘‘Coca-Cola’’.
24 See Pfizer Inc. v Shenzhen Wanyong Information Network Ltd, Beijing Second
Intermediary Court, December 13, 2000, Beijing High Court, November 15, 2001 (Pfizer
Inc. withdrew its appeal against ‘‘viagra.com.cn’’ during the second instance proceeding,#p#分页标题#e#
thus the case was closed). See H. Xue, Domain Name Dispute Resolution in China: A
Comprehensive Review, Temple International and Comparative Law Journal, 18 (Spring
2004).
25 The Madrid Agreement Concerning the International Registration of Marks (1891) and
the Protocol Relating to the Madrid Agreement (1989) are governing the system of
international registration of marks.
26 See the TLT, Article 3(1)(a).
27 See IP Australia’s Trade Mark Office Manual of Practice and Procedure at hhttp://
xeno.ipaustralia.gov.au/D:/Exmanual/cnts-num.htmi.
28 See Canadian Trademark Rules, Article 29, where if the trademark contains matter
expressed in characters other than Latin characters or in numerals other than Arabic or
Roman numerals, a transliteration of the matter in Latin characters and Arabic numerals
shall be furnished to the Canadian Intellectual Property Office. It is available at hhttp://
www.trademark-law-canada.com/rules.htmli.
29 See the Office for Harmonization in the Internal Market Examination Guidelines at
hhttp://oami.eu.int/EN/marque/directives/exam.htm#Heading2i.
30 See the United States Patent and Trademark Office, the Trademark Manual of Examining
Procedure, at hhttp://www.uspto.gov/web/offices/tac/tmep/0800.htmi. In a case
involving the lollipop ‘‘Chupa Chups’’, the seller of Chupa Chups sued the Spanish
seller of ‘‘Chupa Gerts’’ for trademark infringement. The court found that the key term in
the mark ‘‘Chupa’’ is a generic Spanish word for lollipop or sucker, and therefore not
eligible for protection. The court then held that there was no trademark infringement,
because the arbitrary and minor term ‘‘Chups’’ or ‘‘Gerts’’ was found not to create a
r 2006 The Author
18 Journal Compilation r 2006 Blackwell Publishing Ltd
Hong Xue Intellectual Property Law in the Internationalized DNS
likelihood of confusion. See Enrique Bernat F., S. A. v Guadalajara, Inc., 21-F.3d 439 (5th
Cir., 2000).
31 See the United States Patent and Trademark Office, the Trademark Manual of Examining
Procedure, at
32 In China, trademarks in English, French or other foreign languages shall be translated
into Chinese. For example, AMI is ‘‘ ’’, ‘‘SILVERSEA’’ is ‘‘ ’’, ‘‘DEUTSCHE
TELEKOM’’ is ‘‘ ’’ or ‘‘NETHOTEL’’ is ‘‘ ’’. See Chinese
Trademark Office, ‘‘Trademark Registration Examination Rules’’, at hhttp://www.chatm.
com/NewSbShenChaZZ/ViewInfo.asp?id=5i.
33 The WIPO Manual ‘‘Introduction to Trademark Law & Practice’’ (1993) provides that, in
the case where a trademark is in foreign scripts, the registry may request a translation (as#p#分页标题#e#
is the practice in Switzerland) and/or transliteration (as is the practice in Thailand) of the
trademark in local scripts. The registration may then examine the foreign script marks by
applying the general standards.
34 Both ‘‘BOSS’’ and ‘‘VOGUE’’ have registered on the goods of clothes. When the mark
‘‘VOGUE’’ was examined in China, the Trademark Administration of China ruled that
the English term ‘‘VOGUE’’ was little known among Chinese people, while the mark had
been recognized by the public through consistent promotion and use. See the WIPO
UDRP case at
However, their direct Chinese translations, if applied for registration, must be rejected for
deceptiveness and descriptiveness for the use on the goods of clothes. In China, the
character marks referring to specific consumers (such as ‘‘Baby’’ on baby foods or
‘‘Women’’ on women’s clothes) or other characteristic of the goods (such as ‘‘Natural’’ on
cosmetics or ‘‘Three in the One’’ on shampoo) are not eligible for registration. See
Chinese Trademark Office, ‘‘Trademark Registration Examination Rules’’, at
35 See TRIPS Agreement, Article 16(3). Well-known marks are protected against their use in
connection with any goods or services if their use in that context would indicate a
connection with the trademark owner and would be likely to damage the trademark
owner’s interest.
36 See United Kingdom Patent Office, ‘‘Trade Marks Registry Work Registry’’, at hhttp://
www.patent.gov.uk/tm/reference/workman/index.htmi. In a UK case, Burgoyne’s Trade
Mark, 6 RPC 227, the word OOMOO, subject of an application for wines and spirits, was
held to designated ‘‘choice’’ in an Australian Aboriginal language. Nevertheless, the court
ruled that the trademark signified nothing to the ordinary Englishman.
37 See Gula v Manischewitz Co. (1947) 8 C.P.R. 103 (it was held that even though the word
‘‘TAM’’ was a Hebrew or Yiddish word, it was a good subject of a trademark being
neither in the English nor French languages).
38 See IP Australia’s TMO Manual of Practice and Procedure at
39 For example, ‘‘ ’’ (simplified form) is equivalent to ‘‘ ’’ (traditional form);
‘‘ ’’ (simplified form) is equivalent to ‘‘ ’’ and ‘‘ ’’ (traditional form); or,
‘‘ ’’ (simplified form) is equivalent to ‘‘ ’’, ‘‘ ’’, ‘‘ ’’, ‘‘ ’’
and ‘‘ ’’ (traditional forms).#p#分页标题#e#
40 See China Internet Network Information Center (CNNIC), ‘‘Registration of Chinese-
Character Domain Names’’, a
Journal Compilation r 2006 Blackwell Publishing Ltd 19
Intellectual Property Law in the Internationalized DNS Hong Xue
the registry of CN and Chinese-character domain names in China. See H. Xue, The Voice
of China: A Story of Chinese-Character Domain Names, Cardozo Journal of International
and Comparative Law, 12 (Fall 2004).
41 On May 19, 2000, the four ccTLD registries around the Taiwan Strait, which are CNNIC
(Beijing), TWNIC (Taipei), HKNIC (Hong Kong) and MONIC (Macau), established the
Chinese Domain Name Consortium.
42 ‘‘Internationalized Domain Names Registration and Administration Guideline for
Chinese, Japanese and Korean’’ (CJK Guidelines) was published as a working document
of the Internet Engineering Task Force (IETF). It focuses on a standards track
specification for access to domain names in a broader range of scripts than the original
ASCII, but there could be great potential for confusion and difficulties in deployment and
transition due to characters with similar appearances or interpretations. Nonetheless,
these issues could best be addressed administratively, rather than through restrictions
embedded in the protocols. See the document at
43 See the ‘‘Standards for ICANN Authorization of Internationalized Domain Name
Registrations in Registries with Agreements’’, at ICANN Rio de Janeiro Meeting Topic:
Internationalized Domain Names, March 13, 2003, at(‘‘Ideally, a guidelines document should be developed and
published for each language in which a DNS registry wishes to accept IDNA
registrations.’’)
44 See the ‘‘Standards for ICANN Authorization of Internationalized Domain Name
Registrations in Registries with Agreements’’, at
45 Soft law is the body of international instruments, which per se do not make law but still
possess variable regulatory force. See U. Meoth, Soft Law in Governance and Regulation,
Edward Elgar Publishing Ltd, 2004.
46 See the Preamble of ‘‘Joint Recommendation Concerning Provisions on the Protection of
Marks and Other Industrial Property Rights in Signs on the Internet’’, at
Recommendation is also intended to enable owners of conflicting rights in identical or
similar signs to use these signs concurrently on the Internet and determine remedies.
47 See the ‘‘Joint Recommendation Concerning Provisions on the Protection of Marks and
Other Industrial Property Rights in Signs on the Internet’’, Article 2, at
Recommendation is primarily to be effected at the level of substantive law, and therefore
deliberately excludes the issues of conflict of laws and jurisdiction.#p#分页标题#e#
48 See the ‘‘Joint Recommendation Concerning Provisions on the Protection of Marks and
Other Industrial Property Rights in Signs on the Internet’’, Article 3(1)(d), at
49 See the ‘‘Joint Recommendation Concerning Provisions on the Protection of Marks and
Other Industrial Property Rights in Signs on the Internet’’, Article 6, at
50 See the ‘‘Joint Recommendation Concerning Provisions on the Protection of Marks and
Other Industrial Property Rights in Signs on the Internet’’, Articles 7 and 8, at
r 2006 The Author
20 Journal Compilation r 2006 Blackwell Publishing Ltd
Hong Xue Intellectual Property Law in the Internationalized DNS
51 See T. Bettinger and D. Thum, Territorial Trademark Rights in the Global Village—
International Jurisdiction, Choice of Law and Substantive Law for Trademark Disputes
on the Internet, International Review of Industrial Property and Copyright Law (IIC), 31
(2000). It is available at
52 See T. Bettinger, Joint Recommendation Concerning Provisions on the Protection of
Marks and Other Industrial Property Rights in Signs on the Internet, Domain Name Law
and Practice—An International Handbook, Oxford University Press, New York. 2005.
53 The original design of the DNS assumed that there would be one hierarchically organized
set of domain names and that every domain name in it would be unique. So long as
everyone relies on the same family of hierarchically organized databases, whoever
controls the root file enjoys the power to determine which top-level domains are accessible
to the entire Internet (see A.M. Froomkin, ‘‘ICANN and Antitrust’’, University of Illinois
Law Review, 2003). ICANN was formed to manage the legacy domain name system to
ensure that every address is unique and that all users of the Internet can find all valid
addresses (see ‘‘What is ICANN’’,
54 All registrars in the .biz, .com, .info, .name, .net and .org top-level domains follow the
UDRP. See ‘‘Uniform Domain-Name Dispute-Resolution Policy’’,
55 See the UDRP, paragraph 4 (a). It is available at
56 See the Uniform Domain Name Dispute Resolution Database atICANN approved four UDRP dispute-resolution service providers, i.e.
Asian Domain Name Dispute Resolution Center (ADNDRC), International Institute for
Conflict Prevention Resolution, the National Arbitration Forum (NAF) and the WIPO
Arbitration and Mediation Center. Up to June 2005, 7, 304 UDRP cases were filed before
the WIPO (see ‘‘Statistics on WIPO UDRP Domain Name Cases’’, at up to June 2005, 96 cases were filed
before the ADNDRC (at). Statistics
of the cases filed before the other two service providers are not available.
57 See US Department of Commerce, ‘‘National Telecommunications and Information#p#分页标题#e#
Administration Annual Report 2000’’, at‘‘WIPO ccTLD Best Practices for the Prevention and Resolution
of Intellectual Property Disputes’’, at hh
58 See B.G. Davis, The UDRP is an International Scam, Mississippi Law Journal, 72 (Winter
2002); A.M. Froomkin, ICANN’s ‘‘Uniform Dispute Resolution Policy’’—Causes and
(Partial) Cures, Brooklyn Law Review 67 (Spring 2002); A.M. Froomkin, ICANN 2.0:
Meet the New Boss, Loyola Los Angeles Law Review, 36 (Spring 2003) (‘‘The claim that
the UDRP is ‘the closest thing that ICANN has to a consensus policy’ risks romanticizing
its past’’).
59 See the UDRP, paragraph 4(k). The mandatory administrative proceeding requirements
set forth in paragraph 4 shall not prevent either the respondent or the complainant from
submitting the dispute to a court of competent jurisdiction for independent resolution
before such mandatory administrative proceeding is commenced or after such proceeding
is concluded. It is available at hhttp://www.icann.org/udrp/udrp-policy-24oct99.htmi.
r 2006 The Author
Journal Compilation r 2006 Blackwell Publishing Ltd 21
Intellectual Property Law in the Internationalized DNS Hong Xue
60 See G.W. Austin, Valuing ‘‘Domestic Self-Determination’’ in International Intellectual
Property Jurisprudence, Chicago-Kent Law Review, 77 (2002) (As a result, the UDRP has,
for most practical purposes, taken important disputes touching on the regulation of
trademark rights out of the hands of domestic tribunals, replacing them with arbitrationlike
processes, regulated by the UDRP code and the private institution of contract.) Also,
see A.M. Froomkin, ICANN’s ‘‘Uniform Dispute Resolution Policy’’—Causes and
(Partial) Cures, Brooklyn Law Review, 67 (Spring 2002) (the drafters both in WIPO and
ICANN attempted to model the substantive parts of the UDRP on an emerging
international consensus against cybersquatting).
61 Despite the ‘‘private’’ nature of the UDRP, the WIPO had the substantial involvement in
its formation. During 1998–1999, WIPO, in response to the request of the US
Government, launched the ‘‘WIPO Internet Domain Name Process’’. The final report
that was submitted to the Board of the ICANN constituted the basis of the UDRP (see
Final Report of the WIPO Internet Domain Name Process, ‘‘The Management of
Internet Names and Addresses: Intellectual Property Issues’’, at hh The contrast between the UDRP and the
‘‘Joint Recommendation Concerning Provisions on the Protection of Marks and Other
Industrial Property Rights in Signs on the Internet’’ is surprising. So is the attitude change
of the WIPO over the 4 years (1998–2001).#p#分页标题#e#
62 See A.M. Froomkin, ICANN’s ‘‘Uniform Dispute Resolution Policy’’—Causes and
(Partial) Cures, Brooklyn Law Review, 67 (Spring 2002).
63 See ‘‘WIPO Overview of WIPO Panel Views on Selected UDRP Questions’’, at h
64 In accordance with the UDRP, paragraph 4(b), the following circumstances, in particular,
but without limitation, if found by the panel to be present, shall be evidence of the
registration and use of a domain name in bad faith: (i) circumstances indicating that you
have registered or you have acquired the domain name primarily for the purpose of
selling, renting, or otherwise transferring the domain name registration to the
complainant who is the owner of the trademark or service mark or to a competitor of that
complainant, for valuable consideration in excess of your documented out-of-pocket
costs directly related to the domain name; or (ii) you have registered the domain name in
order to prevent the owner of the trademark or service mark from reflecting the mark in a
corresponding domain name, provided that you have engaged in a pattern of such
conduct; or (iii) you have registered the domain name primarily for the purpose of
disrupting the business of a competitor; or (iv) by using the domain name, you have
intentionally attempted to attract, for commercial gain, Internet users to your website or
other on-line location, by creating a likelihood of confusion with the complainant’s mark
as to the source, sponsorship, affiliation, or endorsement of your website or location or of
a product or service on your website or location. In terms of the analysis of the UDRP
decisions, 39.3% of the total cases show evidence of the bad faith in paragraph 4(b)(iv),
30% of the cases in paragraph 4(b)(i), 14.1% of the cases in paragraph 4(b)(ii), 9.1% of
the cases in paragraph 4(b)(iii), and 15.1% have other evidence of bad faith; only in
13.9% of the cases was bad faith not found. See Uniform Domain Name Dispute
Resolution Database Statistics, at h
65 See the UDRP Opinion Guide, Division 3, ‘‘Bad Faith’’, at . Understandably, in the UDRP proceeding, complainants
r 2006 The Author
22 Journal Compilation r 2006 Blackwell Publishing Ltd
Hong Xue Intellectual Property Law in the Internationalized DNS
eventually prevailed in most cases. In line with the statistics from the WIPO, the rate of
transfer decisions rendered by the WIPO panels has increased over the last 5 years from
81% to 86%. In 2004, the rate reached 86.3%. See ‘‘WIPO Arbitration and Mediation
Center New Generic Top-Level Domains: Intellectual Property Considerations’’, at
hhttp://arbiter.wipo.int/domains/reports/newgtld-ip/i.
66 In accordance with the UDRP Opinion Guide, the following circumstances may be used
to satisfy paragraph 4(b)(iv) of the policy: the domain was used to link to another website;#p#分页标题#e#
respondent, a competitor of the complainant, registered a domain name containing
complainant’s mark; respondent registered complainant’s mark in a different top-level
domain; respondent registered a domain name similar to complainant’s mark; respondent
registered a domain name containing complainant’s mark plus a generic or descriptive
term; respondent registered a misspelling of complainant’s mark; or, non-use of the
domain name, plus additional circumstances. The list above is not intended to be
exhaustive. The document is available at hht
btext.htmli.
67 With new gTLDs approved by ICANN, the so-called ‘‘sunrise measures’’ were introduced
to prevent the conflict between the trademarks and domain names. Apparently, these
restrictive measures cannot resolve the problem of translations or transliterations of
trademarks. With respect to ‘‘.info’’, the registry Afilias provided trademark owners with
an option to register domain names before the general public during a ‘‘Sunrise
Registration Period’’, which lasted from July 25 to August 27, 2001. Pursuant to the
Sunrise Registration Conditions (‘‘Conditions’’), such Sunrise domain names had to be
identical to the textual elements of a current trademark registration of national effect that
was issued prior to October 2, 2000. Pursuant to the new gTLDs report, Afilias received
80,951 Sunrise applications, which resulted in 51,764 domain names. Sunrise registration
may then be challenged during the Sunrise Challenge Period. See Afilias Sunrise
Challenge Policy (Revised), at
sunrise_challenge_policy_revisedi. With respect to ‘‘.biz’’, the registry did not provide
trademark owners with a preferential registration option, but attributed all domain names
on a randomized basis during its start-up phase, which lasted from June 25 to September
21, 2001. But .biz offered trademark owners the possibility to purchase ‘‘IP Claims’’,
which, in essence, provided an automated ‘‘watch service’’ combined with a (potential)
priority in enforcing their rights against abusive registrants in an administrative
procedure under the ‘‘Start-up Trademark Opposition Policy’’ (STOP) (at
68 See ‘‘Index of WIPO UDRP Panel Decisions’’, at h
domains/search/legalindex?lang=engi. Among these cases, nine cases involve Chinesecharacter
domain names ( .com; .com; .com; .com;
. com; .com; .com; .com; . com), one case
for Danish-character domain name, two cases for French-character domain names, five
cases for German-character domain names, 12 cases for Japanese-character domain
names (e.g. .net; . com; . com; . com;
.com; . com), 12 cases for Korean-character domain names#p#分页标题#e#
(e.g. .com; .com), two cases for Spainish-character domain
names, two cases for Swedish-character domain names and two cases for Norwegiancharacter
domain names.
r 2006 The Author
http://www.ukthesis.org/dissertation_writing/Law/2012/0312/1082.html Journal Compilation r 2006 Blackwell Publishing Ltd 23
Intellectual Property Law in the Internationalized DNS Hong Xue
69 See John Swire & Sons Limited v Lily Zhu, WIPO D2001-1025, at
70 In accordance with the Rules for Uniform Domain Name Dispute Resolution Policy,
paragraph 15(a), a panel shall decide a complaint in accordance with the policy, these
rules and any rules and principles of law that it deems applicable. See the rules at h
r 2006 The Author
24 Journal Compilation r 2006 Blackwell Publishing Ltd
Hong Xue Intellectual Property Law in the Internationalized DNS