United States: Special Report: What Trademark Owners Really Need To Know About The .ASIA Sunrise

If you are a trademark owner or represent one, you have almost certainly received numerous notifications that the .ASIA sunrise period opens October 9, 2007.  Most of these notifications are likely solicitations from various service providers designed to persuade you or your client to register .ASIA domain names.  This note provides a quick overview of .ASIA so that you or your clients can make an informed decision whether or not to take advantage of the .ASIA sunrise period.

.ASIA is a new Top Level Domain (like ".com" and ".eu") designed to serve the Asian Pacific region. The .ASIA sunrise period is a limited time during which trademark owners can register the .ASIA domain names corresponding to their trademarks (e.g. trademark.asia) or trade names before these domain names become available to the general public.

With over 60% of the world’s population, Asia is a region that is experiencing tremendous economic and technical growth. There are currently almost 400 million internet users in Asia and this number is rapidly increasing. The large number of potential consumers makes Asia particularly valuable to trademark owners. The large number of internet users in Asia means that the internet will be a vital channel to reach these potential consumers. Accordingly, a unified Asian TLD could potentially be an extremely valuable and cost effective tool enabling trademark owners to reach the entire region via a single domain registration instead of registering domains in each individual Asian country they do business, which tends to be both difficult and expensive due to often stringent local presence requirements.  Proponents of .ASIA point to the fact that .eu, the European regional TLD is the fifth most registered TLD.

However, despite the claims of the many organizations selling .ASIA domain names, it is not clear that internet users in the Asian Pacific community will look to the .ASIA TLD for Asia specific information.  Many critics of .ASIA suggest that in fact .eu has not been successful simply because the majority of registrations were by domain name speculators posting Pay-Per-Click adverting links with little actual content useful to internet users in the EU.  Further, critics suggest that the political and cultural reality is that there is no coherent Asian identity, and thus no real community that is being served.  Interestingly, the .ASIA community consists of 73 jurisdictions, including a number of countries most would not expect, such as Israel, Turkey, Iran, Iraq, Australia, Qatar, United Arab Emirates, and New Zealand.  The large number and disparate nature of the members of the .Asia community as it is defined seems to weigh heavily against the possibility of any real common identity.

Although .ASIA is unlikely to be the panacea for companies seeking to market to Internet users in Asian countries, and it is no substitute for registering ccTLDs corresponding to trademarks in the individual countries where those marks are registered or used, it will almost certainly be a target for cybersquatters and typosquatters, especially if .eu is any indicator. Allowing third parties to register domain names corresponding to a trademark owner’s marks can result in consumer confusion, lost sales, and may even be considered a failure to police trademark rights, thereby complicating enforcement of those rights in an online or brick and mortar context. Further, recovery of .ASIA domain names corresponding to trademarks, if possible, can cost 100 times more than simply registering the domain name defensively. Should .ASIA be successful, the consequences to the trademark owner who does not register, both direct (e.g. loss of sales, cost of recovery) and indirect (e.g. weakening of brand presence, inability to enforce trademark rights) could be significant.

While the adoption of the .ASIA TLD by Asian internet users and its viability as a marketing tool to internet users in the .ASIA community is unclear, the risks to trademark owners who do not protect their rights are much clearer. While unpalatable and frustrating to many trademark owners, the necessity of protecting trademark rights via registration of domain names during a sunrise period is an unfortunate reality of the internet world. Ownership of a trademark provides many rights, but also carries with it many responsibilities. Accordingly, companies with trademarks that are registered, used, or are likely to be used anywhere in the 73 country Asian Pacific community members, should consider registering those trademarks as .ASIA domain names, if only for defensive purposes.

If you would like more information or require assistance in applying for .ASIA domain names, please contact Marc Trachtenberg or DotAsia@ladasdomains.com.

The content of this article is intended to provided a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.