The leading applicant for new generic top-level domains (gTLDs), Donuts Inc, has launched a new mechanism for protecting trademark rights.
Known as the domain protected marks list (DPML), it allows rights owners to block a trademarked term from being registered across all of the company’s registries.
Donuts applied for 307 gTLDs, including .business and .email, but has previously said it expects to control “200 plus” after possibly losing some of the contested applications in auctions.
“Marks holders are concerned about potential abuse of their brand names. DPML and the other mechanisms we’ve elected to provide ensure brands are even more extensively protected now than they ever have been, and at low cost,” said Donuts co-founder Richard Tindal.
The service went live on Wednesday and is available through ICANN-accredited domain name registrars. The wholesale price has not been published, but there is a suggested retail price of $3,000 to block a term for five years.
Donuts will accept names exactly matching a trademark or ones containing an exact match (trademark+keyword), before blocking them for a minimum of five, and a maximum of 10, years. Subscriptions can be renewed thereafter for between one and 10 years.
Before a term can be blocked, it must be registered in the Trademark Clearinghouse (TMCH), a central database of trademarks that helps to protect rights in the new gTLD space.
The company added that “certain restrictions apply to premium names, three-character names and other various applications of the service”.
“This is a service of real value to our clients,” said Markus Eggensperger, founder of united-domains AG of Germany. “Donuts has carefully taken into account brand protection needs and provided a thoughtful and effective service to brand owners.”
The DPML will be “significantly less expensive than trying to register defensively”, said Elisa Cooper, director of product marketing at brand protection company MarkMonitor. “If Donuts gets 200 registries, the blocking cost will be $3 a year per block per registry.
“This is really cost-effective, especially as Donuts will account for about a third of open registries [those available for public registration],” she said. “It’s a really effective tool for rights owners to tackle cybersquatters.
“With all that said, there is always the possibility of registering a typosquatted name – those cannot be protected – so there is still that possibility for cybersquatters to come in.”
The DPML should be used as part of an overall brand protection strategy, Cooper noted, as monitoring registries for potentially infringing terms is still an important tool.
She added: “There has been a lot of interest because clients see it as a quick way to deal with these registries. I’m hearing strategies all over the board: some companies don’t want many registrations and others want all their crown jewels across all the registries.”
If a blocked term is shared by two trademark owners and one wants to release the name for registration, that rights owner can override the block by showing proof of a TMCH-validated trademark, Cooper said.
The first new gTLDs are expected to launch later this year.
This article was first published on 25 September 2013 in World IP Review
domain protected marks list, donuts inc, gtlds, icann, richard tindal