Development of new tools against cybersquatting: DPML and MPML and derivatives… an opportunity for trademark owners

Just like Donuts, a company that introduced the “Domains Protected Marks List” (DPML), private registries increasingly try to offer rights holders similar protection tools in addition to the Trademark Clearinghouse (TMCH).

As a reminder, DPML is a rights protection mechanism for all TLDs operated by several registries, including Donuts, in order to block the registration of domain names containing trademarks previously validated by the TMCH. Thus, all trademarks registered and maintained in the TMCH are eligible, provided they comprise at least three letters. Once this condition is met, blocking a trademark can be achieved either for identical or contained terms therein. Thus, when a term is protected in DPML, without even registering corresponding domain names, it will not be available for purchase, in relation to hundreds of extensions. Furthermore, blocking is active only if the trademark remains registered with the TMCH.

But whilst DPML can be an effective tool against cybersquatting, rights holders wishing to register domain names will nevertheless have to conduct an unblocking for each registered domain name. Also, rights holders will have to renew the registration of the related trademark in the TMCH to preserve the blocking in DPML. Thus registering a trademark in DPML requires a preliminary study to identify risks and develop a protection strategy.

The MPML “Mind + Machines’ Protected Marks List”, set up by the registry Minds + Machines, operates in a way similar to DPML. As with DPML, only trademarks which comprise at least three letters, registered and maintained in the TMCH may be blocked if identical or contained terms therein. Moreover, as with DPML, some domain names were excluded from the mechanism, including names blocked by ICANN. However, the TLDs operated by Minds + Machines are logically different and relate e.g. to .fashion or .law. Similarly, the blocking period may vary depending on the registry.

Finally, the various blocking mechanisms offered by private registries are not really different because they have the same goal to fight against cybersquatting, except that each of them operates different TLDs. It is not impossible that in the future, these mechanisms grow and extend to other private registries.

It is therefore necessary to examine on a case by case basis whether to use such mechanisms which may be useful to protect a trademark on the Internet. Dreyfus has expertise on these issues and can advise you on the best strategy.