Explanatory Note N2

To the .UA Domain Policy

Of 20 June 2008

Regarding Transliteration of Diacritics semi-symbolic add-ons to letters)

The .UA Domain Administrator, striving to safeguard as much as possible the rights and interests of trademark holders from cybersquatting and other types of possible infringement of their rights in the area of domain name delegation, and proceeding from that:

• registrars and registrants started submitting requests regarding delegation of second-level private domain names in the .UA domain based on registration of the trademarks, which contain the letters with diacritics, such as: à, á, â, ç, è, é, ê, ë, ì, í, î, ï, ò, ó, ô, ù, ú, û, ý, which are used in the French and some other languages;
• the existing version of the .UA Domain Policy does not specifically regulate the issue of transliteration of letters with diacritics;
• there is a real need to clarify the issue regarding the transliteration of such letters and delegation of second-level private domains in the .UA domain to persons holding the rights in respective trademarks before an updated .UA Domain Policy is enacted;
• the existing technical standard of spelling domain names in the .UA domain provides for using a limited set of ASCII (American Standard Code for Information Interchange)characters based on English alphabet; and

in consideration of the fact that:

• administration of the .UA domain is carried out pursuant to the .UA Domain Policy, with due account for the ICANN, CENTR, and WIPO recommendations, as well as the international practices of public domain administration; and that
• significant experience of domain dispute resolution has been developed by the World Intellectual Property Organization (WIPO), as presented in numerous decisions of the WIPO Arbitration and Mediation Center, accepted pursuant to the Uniform Domain Resolution Policy (UDRP);

and also taking into account the following provisions of the .UA Domain Policy:

• According to Clause 3.2 of the said Policy, the second-level private domain names in the .UA domain shall only be delegated if spelling of the respective domain name in full or of its second-level component (before character “.”, but exclusive of this character) coincides with the Mark, the rights of whose use in Ukraine are held by the respective registrant. The term "Mark" according to Clause 1.6 of the .UA Domain Policy means a word mark for goods and services with regard to which a Trademark or Service Mark Certificate of Ukraine is issued by the central executive authority dealing with the issues of legal protection of intellectual property, or such mark that has obtained legal protection in the territory of Ukraine pursuant to the Arrangement of Madrid Concerning the International Registration of Trademarks or, if such a registered trademark or service mark consists of text and other symbols, it means its word part, which in itself is an object of legal protection.
• According to Clause 3.4 of the .UA Domain Policy, spelling of the Mark, within the scope of this Policy, shall be its representation by characters from among the letters of the Latin alphabet, Arabic numerals and the "-" symbol. If the Mark contains characters of other alphabets except the Latin alphabet, numerals of other numerals systems and/or other characters, the spelling of the Mark shall be its transliteration in Latin characters carried out in compliance with transliteration rules of the alphabet, by means of which the Mark is written,

the Administrator has examined and took into consideration the below provisions, which were justified and applied in resolution of the domain disputes related to letters with the diacritics (circumflex «^», acute «´», grave accent «`», diaeresis «¨», cedilla «¸») in protected trademarks and respective domain names, viz.:

• an exact transliteration of the trademark should be taken into consideration, as its most natural transliteration, with due account for limitations of the domain name system regarding the characters, which could be used as part of a domain name;
• the letters with diacritics are not part of the alphabet of the French and some other languages (the respective orthography systems make provision for these nonstandard type units to reflect special characteristics in the pronunciation of vowels);
• the visual and phonetic differences between the words, which contain letters with diacritics, and words, which contain the same letters but without diacritics, is insignificant. Such a minor difference is insufficient to refute the conclusion of similarity to the extent of confusion, since it is the visual likeness, which is determinative;
• since both the British and American English do not use diacritics, the domains derived from the relevant trademarks, which contain additional elements of letters in their original spelling, shall use the so-called anglicized format, i.e., without any marks over letters. In this way, a domain name without diacritics contains a complete formulation of the protected trademark where such diacritics are used, and essentially consists of the same word, and absence of diacritics is insignificant in determining of whether or not the domain name is identical or similar to the verge of confusion of the trademark. In such situations, the domain name shall remain extremely similar to the trademark, both in pronunciation and meaning, despite any visual elements of the trademark;
• it should also be noted that a large proportion of Internet users have keyboards with English layouts, which contain no diacritics, and, therefore, the users tend to ignore them when typing in domain addresses;
• there is a likelihood of confusing the trademarks, which contain diacritics in their original spelling, and respective domains without such diacritics over respective letters;
• the Internet users, especially those from outside the countries, where use of diacritics is common and traditional, tend to enter search names without diacritics when looking for the desired website; therefore, they might be misled, being directed to the website of an entity other than the one, which holds the protected trademark with diacritics presented in accordance with the respective orthographic system;

The letters with diacritics: «à», «á», «â», «ç», «è», «é», «ê», «ë», «ì», «í», «î», «ï», «ò», «ó», «ô», «ù», «ú», «û», «ý», «ÿ» are not included in the standard ASCII code, i.e., for technical reasons, the diacritics in domain names have to be omitted; therefore, they are traditionally replaced for online purposes with respective letters without diacritics, which is a standard practice. Moreover, the WIPO Administrative Commission has recognized the diacritics as nonstandard type units and categorized them as images.

In view of the fact that the so-called “Internationalized Domain Names” (IDN), which allow inclusion of diacritics into domain names, have become available for .ch and some other domain names, and due to inevitability of confusion when both name versions are in existence (with and without such diacritics), in order to protect the rights of users, it is appropriate that both transliteration versions should be used in domain names by one entity only.

In view of the above and acting within the provisions of Clauses 3.2, 3.4, and 1.6 of the .UA Domain Policy, the Administrator deems it permissible and reasonable to delegate the second-level private domain names in the .UA domain only if the spelling of the respective full domain name or of its second-level component (before symbol "." but exclusive of this symbol) coincides with the Mark the rights to whose use in the territory of Ukraine are held by the respective registrant, provided the specific elements of the Mark, i.e., the diacritics «^», «´», «`», «¨», «¸» are omitted.

Example:

N	Letters with diacritics	Permissible transliteration version
1	à, á, â	"a"
2	ò, ó, ô	"o"
3	ù, ú, û	"u"
4	ç	"c"
5	ì, í, î, ï	"i"
6	è, é, ê, ë	"e"
7	ý, ÿ	"y"

This Explanatory Note shall be published on the .UA Domain Administrator's official website (www.hostmaster.ua). The Explanatory Note shall be in force from the date of its publication and shall remain valid until revoked and/or replaced by appropriate decision of the .UA Domain Administrator.

The following case materials of the WIPO Arbitration and Mediation Center Administrative Commission have been used:

1. Feldschlösschen Getränke Holding AG v. John De Souza Case No. DCH2004-0012 dated 31 August 2004.
2. LANCOME PARFUMS ET BEAUTE & CIE, L'OREAL v. 10 Selling Case No. D2008-0226.
3. Kelemata S.p.A. v. Mr. Hugo Bazzo Case No. D2003-0594 dated 16 September 2003
4. Supre Pty Ltd v. Paul King Case No. DAU2004-0006.
5. Kelemata S.p.A. v. Mr. Bassarab Dungaciu, WIPO Case No. D2003-0849.
6. Esteé Lauder Inc. v. estelauder.com, estelauder.net Ё Jeff Hanna, WIPO Case No. D2000-0869.
7. Telecom SA v. ITM INC. Case No. D2005-0128 17 May 2005.
8. Fortuneo v. Johann Guinebert Case No. D2001-0781.
9. Société des Hôtels Méridien v. ABC-Consulting Case No. D2004-0792.
10. Cherie Fm v. Mr. Franck Sablon-Dauberton, WIPO Case No. D2003-0486.
11. France Printemps v. Reinhard Herrmann Case No. D2007-0971.
12. ALK-Abelló A/S v. Manila Industries Inc. Case No. D2006-1033.
13. Ross-Simons of Warwick, Inc. v. Noel Summers Case No. D2004-0194.
14. Banco Itaú S.A. v. F. Nazar Case No. D2003-0454.
15. Rosa María Clara Pallarés v. Dennis Heinz Case No. D2005-0548.
16. LLADRÓ COMERCIAL, S.A and LLADRO USA, INC. v. YESTERDAYS SOUTH, INC. Case No. D2000-1358.