Cyrillic Considerations

Nov 27 2015 - 12:08

Article by Tatyana Kulikova, Trademark Attorney and PETOŠEVIĆ Russia Director, first published in IPPro The Internet, April 2015

The TLD .РФ (.rf in Latin) was the first Cyrillic TLD of the IDNA (Internationalising Domain Names in Applications) system. It was delegated to Russia in May 2010, but the idea had been around since 2001.

At the beginning of this year, Macedonia launched its Cyrillic TLD, .мкд (.mkd in Latin), and on 1 March, Belarus launched .бел (.bel in Latin), its own Cyrillic domain. That was the sixth TLD after Russia’s, Serbia’s (.срб, or .srb in Latin), Kazakhstan’s (.каз, or .kaz in Latin), Ukraine’s (.укр, or .ukr in Latin) and Macedonia’s. The Cyrillic TLDs of Mongolia (.мон, or .mon in Latin) and Bulgaria (.бг, or .bg in Latin) will be launched in the near future.

A Cyrillic domain name in the .rf TLD can be registered if it meets the following requirements:

    - Ends with .rf in Cyrillic;  
    - Contains a minimum of two and a maximum of 63 symbols (letters, digits and hyphens);  
    - Starts and ends with a Cyrillic letter or digit; and  
    - A full list of allowed symbols is published on unicode.org  

From the beginning, the Coordination Center for TLD RU/RF, the administrator of the national TLDs .ru and .РФ, applied the first-to-file system. For the moment, there are no restrictions for non-residents of Russia.

The coordination centre opened the reservation procedure on 25 November 2009, before the official delegation of the TLD (12 May 2010). Within the sunrise period (from 25 November 2009 until 11 May 2010), trademark owners could reserve a Cyrillic domain name identical to the trademark valid in Russia as of the date of filing the domain name application.

According to the Rules on Priority Registration of Domains, in order to register a Cyrillic domain, the trademark owner should submit a Certificate of Registration for the valid trademark that: “Reproduces in full a word element of the trademark or is identical to a word element of the trademark after removal of hyphens or replacement of spaces with hyphens. Herewith, the word element of the trademark must include at least one protected element.”

Russian registrars began to collect domain name applications from their clients long before 25 November 2009, in order to be first in the queue of trademark owners. Nevertheless, the sunrise period that started at the end of November 2009 was put on hold the following day. As the coordination centre revealed, on the first day of the sunrise period, one company, Tsetis, reserved domain names such as cinema.rf, sex.rf, bank.rf, and dating.rf.

Of course, Russian internet users were indignant at the reservation of the most popular and merchantable domains in the name of one company.

However, it was revealed that Tsetis registered the relevant domain names (sex, cinema, bank, all in Russian) in different Nice classes (irrelevant to the nature of the trademarks, like international classes 6, 7 or 11), meaning that they formally complied with all requirements of the sunrise period.

After long deliberation and studying different amendments to the rules, the reservation procedure was reopened on 10 December 2009. The first phase of the sunrise period concluded on 11 May 2010.

During the second phase of the sunrise period (15 July to 30 September 2010), the following persons/groups had a priority right to Cyrillic domains:

    - Trademark owners;  
    - Company name owners;  
    - Appellation of origin holders;  
    - Non-commercial organisations registered in Russia; and  
    - Mass media organisations.  

Soon afterwards, the coordination centre faced yet another problem, because the number of applications for mass media registration substantially increased: three in April 2010, 36 in May 2010, and 900 in June 2010 (such as books.rf and building.rf, all in Russian).

Of course, both the coordination centre and Roscomnadzor (the official body authorised to supervise mass media in Russia) sounded the alarm and connected such activity in the field of mass media with the sunrise period in the Cyrillic .rf TLD.

The coordination centre reacted immediately and on 13 July 2010, it approved a new version of the rules, according to which only those mass media holders whose rights were registered before 11 May 2010 were able to participate in the sunrise period.

However, a few Cyrillic domains, generic in nature, (such as delivery.rf, beer.rf and vodka.rf) were registered during the sunrise period on the basis of mass media registrations.

On 11 November 2010, the coordination centre launched the third phase, which was open to the general public. The first Cyrillic domains registered within that period were president.rf and government.rf (all in Russian).

It should be noted that during the first hour of the open phase, the coordination centre registered more than 100,000 Cyrillic domains, and during the first week the number of Cyrillic domains rose above 500,000.

And despite the fact that non-residents could not register Cyrillic domains in the first year of the third phase, the registrars provided services allowing their foreign clients to register Cyrillic domains (they registered the domain in their own name and then, in a year, transferred the domains to their foreign clients).

On 28 March 2015, the total number of registered Cyrillic domains stood at 831,903 (less than the total number of domains registered at the end of 2011, 937,000, but it has been more or less the same for over three years).

Currently, it is possible to register Cyrillic domains in the TLD .москва (.moscow), .дети (.children), .орг (.org), and .онлайн (.online).

Despite the sunrise period for trademark owners lasting about 10 months, some trademark owners failed to register Cyrillic domain names in due time, and several disputes regarding .rf domains have been brought before the courts.

When considering domain name disputes, judges take into account factors such as: any use and duration of use of the domain name; whether the domain name owner acted in bad faith or not; and why the trademark owner did not exercise its right to register the domain name during the sunrise period.

96 appreciate this