Explanatory Note N1 To the .UA Domain Policy

Of 15 May 2008

Regarding Transliteration of Umlaut Letters "ä", "ö", "ü".

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 taking into account:

• increasingly more frequent requests from registrars and registrants regarding delegation of second-level private domain names in the .UA domain based on registration of the trademarks, which contain the umlaut letters "ä", "ö", "ü" used in the German and some other languages;
• the need to clarify the issues regarding the transliteration of the umlaut letters "ä", "ö", "ü" 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;
• that 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 implemented 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 ".", exclusive)
  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 that has obtained legal protection in the territory of Ukraine pursuant to the Arrangement of Madrid Concerning the International Registration of Trademarks or, in case such a registered trademark or service mark consists of text and other characters, 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 shall be its presentation by characters from among the letters of the Latin alphabet, Arabic numerals and the "-" symbol. If the Mark contains characters of other alphabets except for the Latin one, 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 the umlaut letters "ä", "ö", "ü" 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 "ö", "ä", "ü" are umlaut versions of the letters "Ю" "Н" "u", respectively, supplemented with a diacritic, namely, umlaut (a superscript colon put over the letters "Ю" "Н" "u" to designate the phenomenon of vowel mutation), i.e., the difference, especially visual, but also phonetic, is insignificant;
• since the British and American alphabets lack such a diacritic as umlaut, the domains derived from the respective trademarks, which contain umlauts in their original spelling, shall use the so-called anglicized format, i.e., without umlauts put over the respective letters. In this way, a protected trademark using umlauts and the respective domain name without umlauts consist of exactly the same word elements, except umlauts; therefore, absence of umlauts is insignificant in determining of whether or not the domain name is identical or similar, to the verge of confusion of the trademark;
• it should also be noted that a large proportion of Internet users have keyboards with English layout, which include umlauts as symbols rather than letters, and, therefore, the users tend to ignore the umlauts when typing in domain addresses;
• there is a likelihood that English-speaking individuals might be confused by trademarks, which contain umlauts in their original spelling, and respective domains without umlauts over the respective letters;
• the Web-users, especially from outside the countries, where use of umlauts is common and traditional, tend to enter search names without umlauts, when searching 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 using umlauts in its original spelling;
• the umlaut letters ä, ö, ü, which are not included in the standard ASCII code, are normally replaced for online purposes with digraphs (two-letter written characters), such as: "ae" ("ä"), "oe" ("ö"), "ue" (ü). This is a common practice, as evidenced by both e-mail addressed used by respective rightholders of trademarks with umlauts, and domain names of respective geographic names (e.g., domain name of the German city München (Munich) - muenchen.de);
• since the umlauts are non-existent in the English alphabet and they cannot be used in domain names, the words with umlauts shall be transliterated replacing the umlauts as follows: either 1) by adding the letter "e" or 2) by removing the dots altogether and writing in English, including in domain names, which are both generally accepted international methods. Both methods are commonly and widely used. As confusion would be unavoidable when both names are in existence, in order to protect the rights of users, it is reasonable that both umlaut 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 spelling of the respective full domain name or its second-level component (before symbol “.” exclusive) 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 umlaut letters ä, ö, ü, are transliterated as follows:

N	Umlaut letter	Permissible transliteration versions
1	ä	ae	a
1	ö	oe	o
1	ü	ue	u

In order to prevent cybersquatting, it is also permissible for the respective Mark holder to delegate domain names in both transliteration versions.

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 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. FC Bayern München AG v. Peoples Net Services Ltd. Case No. D2003-0464 dated 15 July 2003 (domains: bayernmuenchen.net and bayernmunchen.net)
2. Voigtländer GmbH v. John Voigtlander Case No. D2003-0095 (domain voigtlander.com)
3. Voigtländer GmbH v. The Photo Village, Inc.Case No. D2004-0872 dated 10 January 2005 (domains: voigtlandershop.biz and voigtlandershop.net)
4. Yildiz Holding A.S., Ülker Gida Sanayi Ve Ticaret A.S. v. Dr. Mehmet Kahveci Case No. D2002-1141 dated 19 February 2003 (domain ulker.com)
5. Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp.Case No. D2001-0936 dated 18 December 2001 (domain koestritzer.com)
6. Deutsche Börse AG v. Pertshire Marketing, Ltd Case No. D2006-0786 dated 17 August 2006 (domain deutscheborse.com)
7. Mövenpick Holding AG v. Olive Tree Products Case No. D2000-1540 dated 30 December 2000 (domain movenpickhotels.com)