A sweet solution? Donuts and trademarks


Bob Samuelson

A sweet solution? Donuts and trademarks

With new generic top-level domains in the process of becoming a reality, registry operator Donuts has launched a tool to ensure intellectual property rights are protected in the new system, as WIPR finds out.

For many brands, the new generic top-level domain (gTLD) programme instigated and developed by ICANN over the last few years raises more questions than it answers, especially when it comes to intellectual property.

ICANN’s Intellectual Property Constituency has been a vocal and hardy champion of brand owners’ need to protect their trademarks, but the various competing interests within the programme have meant that ICANN’s main solution, the Trademark Clearinghouse (TMCH), has not provided all brands with the protection they wanted.

For many, IP is still a major concern in the new programme.

Donuts, the largest registry operator for new gTLDs, is attempting to reassure brand owners by developing its own, additional IPprotection. The Domains Protected Marks List (DPML), unlike the TMCH, will allow brands to proactively block domain names being registered across all Donut-operated gTLDs; in theory, at least, this provides a more robust and reassuring level of protection. TB&I asked Bob Samuelson for more details.

How much interest has there been in the DPML?

Quite a bit. Interest has been very high and even predates the service's availability. Donuts spent considerable time designing the DPML to address the concerns expressed by intellectual property experts and rights holders. We've been very pleased so far with the order volume and with the number of registrars that have signed on to sell the service.

Can you tell us the wholesale price of the DPML?

That information isn't public, but we’ve seen retail pricing under $3,000 for the initial fiveyear term.

What happens if a trademark owner blocks a term using the DPML but another company that shares the trademark wants to register that term?

The other company with rights to the same term may "override" a DPML block and register the name in question. Keep in mind that a customer initiating an override must have:

  • Sunrise rights to the name
  • An exact match of the trademark
  • A valid filing for the mark in the Trademark Clearinghouse (TMCH)

If a rights holder is aware of a competing term that it wants to put to use and avoid an override, that can be done simply by registering the term as a domain name. (Example: Delta Airlines could register a term related to the word “delta” to prevent Delta Faucets from overriding a DPML block of that term.)

Detail on the terms and conditions of DPML can be found on our website at www.donuts.co.

"Rights holders can address the need to protect a name from infringement with one service that does so at a fraction of the cost." 

Why is the DPML beneficial to rights owners?

Cost savings and simplicity. Rights holders can address the need to protect a name from infringement with one service that does so at a fraction of the cost of "defensively" registering a term in all Donuts-managed gTLDs. There are, however, other benefits:

  • Brand owners can protect more than their marks—they can also purchase DPML blocks for names that contain their marks.
  • DPML is flexible. Trademark holders can protect terms in all Donuts gTLDs while retaining the ability to register specific terms during or after Sunrise.
  • A one-time purchase protects a term for five years.
  • Simplicity: Names blocked by DPML aren't "live" on the Internet, so rights holders have no technical burden when using the service.

Surely the DPML is only cost-effective if trademark owners would otherwise register defensively in all, or at least most, of your registries?

It's a very cost-effective service. The perceived need to register a term in all gTLDs is based on the needs of the rights holder—surely some would choose to do so, while others may skip gTLDs where their terms don’t seem relevant (e.g., SmithGravelContractors.PIZZA). But the appeal is in the ability to manage terms costeffectively across all Donuts gTLDs.

What is Donuts doing to ensure that its involvement in the gTLD process goes as smoothly as possible?

We are doing our very best to make the system easy for registrars (the “retailers” of domain name registrations) to integrate and provide DPML to customers. Further, we have designed our services and technical systems to ensure that we provide the simplicity and security expected by both registrars and the registrants themselves.

Is there anything else going on at Donuts that brand owners should know about?

We designed the DPML service to address the needs and concerns requested by the trademark community. The new gTLD program is in full swing, with hundreds of new gTLDs being introduced over the course of the next year. Companies that have yet to form a strategy for new gTLDs need to get up to speed quickly— these names will provide the specific, relevant and fresh naming options the Internet has needed for many years. Our website at www.donuts.co is a great resource and provides all of the terms,conditions and other details on DPML and our other services.

Bob Samuelson is vice president of sales and marketing at Donuts Inc. He can be contacted at bob@donuts.co or for more information click here

This article was first published on 18 February 2014 in World IP Review

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