Internationalised gTLDs pose challenge for owners of multilingual brands

The Internet Corporation for Assigned Names and Numbers (ICANN) devised the new generic top-level domain (gTLD) programme to open up new top-level domains, as popular domains such as '.com' become increasingly crowded. Although domain names displayed in non-ASCII scripts – known as internationalised domain names – are currently available as second and lower-level domains, the new gTLD programme will also allow internationalised domain name TLDs. ICANN received 116 applications for internationalised domain name TLDs in languages such as Arabic, Chinese, Hindi and Russian. When these internationalised domain name TLDs launch, internet users may access certain web addresses entirely in their local languages.

Another new feature of the new gTLD programme is the Trademark Clearinghouse. Rights holders interested in proactively protecting their trademarks during the new gTLD rollout may validate and record their marks in this centralised database. Recordation in the clearinghouse allows rights holders to register their marks in new TLDs during a 30-day sunrise period before registration opens to the public. The clearinghouse will also alert trademark owners when a third party attempts to register a domain name that matches a recorded trademark during a mandatory 90-day trademark claims service period.

However, there are potential limitations to recordation in the clearinghouse for rights holders that use their marks in multiple languages. The clearinghouse accepts only marks that are registered with a national trademark office, marks validated in court and marks protected by statute or treaty. Trademarks that feature multiple scripts, such as a mark with both Latin and Cyrillic characters, may not be eligible for notification or registration benefits. While some registries may permit the registration of mixed script domain names, the owners of such mixed trademarks must wait until after the registry’s 30-day sunrise period to apply for registration.

Additionally, a rights holder may take advantage of the sunrise period only if the applied-for domain name is an identical match to the recorded trademark. Similarly, the clearinghouse alerts rights holders only when a third party attempts to register a domain name that is an identical match to the holder's recorded trademark. These benefits do not extend to the translation or transliteration of a trademark. Rights holders which use their trademark in multiple languages would benefit from recording each language version of their trademarks in the clearinghouse. This means that each version of the trademark must meet the criteria to qualify for the clearinghouse.

Therefore, brand owners with multilingual marks and those that transliterate or translate their trademarks may find that the clearinghouse does not protect them fully unless they take proactive steps to make sure all versions of their trademarks are eligible for the clearinghouse.