The Internet Corporation for Assigned Names and Numbers (“ICANN”) devised the new generic Top-Level Domain (“gTLD”) program 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 internationalized domain names (“IDNs”), are currently available as second- and lower-level domains, the new gTLD program will also allow IDN TLDs. ICANN received 116 applications for IDN TLDs in languages such as Arabic, Chinese, Hindi, and Russian. When these IDN TLDs launch, Internet users may access certain web addresses entirely in their local languages.
Another new feature of the new gTLD program is the Trademark Clearinghouse. Trademark owners interested in proactively protecting their trademarks during the new gTLD rollout may validate and record their marks in this centralized database. Recordation in the Clearinghouse allows trademark 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 who 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 the 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 trademark owner 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 trademark owners only when a third party attempts to register a domain name that is an identical match to the owners’ recorded trademark. These benefits do not extend to the translation or transliteration of a trademark. Rights-holders who 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 fully them unless they take proactive steps to make sure all versions of their trademarks are eligible for the Clearinghouse.
