In the context of the new gTLDs, certain candidates have chosen to set up additional protection mechanisms for right holders alongside those of the Trademark Clearinghouse (TMCH). Amongst these candidates is the Donuts company which has applied for 307 new gTLDs and is offering their Domains Protected Mark List (DPML) that aims to shore up the weaknesses of the TMCH.
The DPML is a rights protection mechanism for all the new gTLDs that will be run by the Donuts company. It comes in the form of a trademark database composed of registrations previously validated by the TMCH. It serves to block the registering of domain names containing these marks across all the new gTLDs operated by Donuts. Registering trademarks with the DPML is on a voluntary basis for right holders.
Eligibility: open to all marks registered and maintained in the TMCH and for which an SMD file has been generated (the SMD file is generated by the TMCH for each registered mark that is eligible for Sunrise periods).
Effect: the blockage of the identical mark or the mark plus a term in all the new gTLDs which will be operated by Donuts (for example, for the SONY trademark, the names sony.tld, sony-pictures.tld may be blocked but not the domain name soni.tld). This block is only active as long as the mark remains registered with the TMCH. Blocking must be done for each variation of the mark
Exceptions to the blocking process:
- Marks comprising 1 and 2 letters are not eligible; marks with 3 letters can only be blocked if identical.
- Domain names registered prior to the subscription of marks with the DPML.
- The “Premium” names which will be marketed by Donuts separately. Overall these are generic terms that have a direct link with the marketed TLD, for example order.pizza ou book.flights.
- Domain names registered prior to DPML subscriptions.
A specific domain name can be unblocked on request, providing that the domain name is identical to a mark registered with the TMCH and that the associated SMD file is provided. Such unblocking cannot be prohibited. The right holder would then receive a registration notification from the DPML.
The DPML offers several pros and cons that may be more or less favorable according to the domain name registration policy of the rights holder.
In terms of advantages, it is a powerful weapon in the fight against cybersquatting. In reality, the majority of domain names being cybersquatted today are domain names containing a trademark rather than domain names imitating a mark by approximation.
The disadvantages are the flaws in the mechanism for rights holders who equally wish to register domain names:
- The need to unblock each registered domain name.
- Registration is only possible for domain names that exactly match marks registered with the TMCH by providing the appropriate SMD file.
- Impossible to block domain names identical to the trademark if the proponent has a mark registered in the TMCH. For example, owners of identical marks will not be able to rely solely on the DPML and have to make defensive registrations of domain names.
- Impossible to block trademarks across a selection of TLDs operated by Donuts.
- The obligation to renew the registration of the corresponding mark in the TMCH in order to ensure blocking within the DPML.
In summary, the automatic subscription of a trademark in the DPML is not recommended since it can lead to ‘conflict’ situations. The strategy to be adopted will depend on several factors linked both to the “quality” of the trademark and to the objectives of its holder.
An initial study is necessary to identify the risks and adopt an appropriate protection strategy.