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Donuts’ trademark block list goes live, pricing revealed

Kevin Murphy, September 25, 2013, 11:10:16 (UTC), Domain Registries

Donuts’ Domain Protected Marks List, which gives trademark owners the ability to defensively block their marks across the company’s whole portfolio of gTLDs, has gone live.
The service goes above and beyond what new gTLD registries are obliged to offer by ICANN.
As a “block” service, in which names will not resolve, it’s reminiscent of the Sunrise B service offered by ICM Registry at .xxx’s launch, which was praised and cursed in equal measure.
But with DPML, trademark owners also have the ability to block “trademark+keyword” names, for example, so Pepsi could block “drinkpepsi” or “pepsisucks”.
It’s not a wildcard, however. Companies would have to pay for each trademark+keyword string they wanted blocking.
DPML covers all of the gTLDs that Donuts plans to launch, which could be as many as 300. It currently has 28 registry agreements with ICANN and 272 applications remaining in various stages of evaluation.
Trademark owners will only be able to sign up to DPML if their marks are registered with the Trademark Clearinghouse under the “use” standard required to participate in Sunrise periods.
Donuts is also excluding an unspecified number of strings it regards as “premium”, so the owners of marks matching those strings will be out of luck, it seems.
Blocks will be available for a minimum of five years an maximum of 10 years. After expiration, they can be renewed with minimum terms of one year.
The company has not disclose its wholesale pricing, but registrars we’ve found listing the service on their web sites so far (101domain and EnCirca) price it between $2,895 and $2,995 for a five-year registration.
It looks pricey, but it’s likely to be extraordinarily good value compared to the alternative of Sunrise periods.
If Donuts winds up with 200 gTLDs in its portfolio, a $3,000 price tag ($600 per year) works out to a defensive registration cost of $3 per domain per gTLD per year.
If it winds up with all 300, the price would be $2.
That’s in line (if we’re assuming non-budget pricing comparisons and registrars’ DPML markup), with Donuts co-founder Richard Tindal’s statement earlier this year: that DPML would be 5% to 10% the cost of a regular registration.
Tindal also spoke then about a way for rival trademark owners to “unblock” matching names, so Apple the record company could unblock a DPML on apple.music obtained by Apple the computer company, for example.
Donuts is encouraging trademark owners to participate before its first gTLDs goes live, which it expects to happen later this year.

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Comments (8)

  1. Rob says:
    September 25, 2013 at 12:14 pm

    What a mess for trademark holders to deal with all this ‘money grab’

    Reply
  2. Anthony Beltran says:
    September 25, 2013 at 7:19 pm

    Defensive registration is nothing new for TM holders.
    Any company doing business outside their home country has had to navigate the ccTLD landscape for years now.
    For these guys that already spend any kind of money on the vast array of TLDs already available, whether for defensive purposes or actual in country usage, this is the best tool we’ve seen which will effectively manage nearly 1/3 of the new gTLD program for $600/year.
    Donuts is setting a good example here. We hope, and are pushing for, other large registries will follow.

    Reply
  3. Jon says:
    September 26, 2013 at 12:15 pm

    Yes, poor IP lawyers. If Mr Tindall can put together a bunch of TLDs that these people can convince their clients to pay a couple of hundred bucks each, per brand, to protect (out of their global IP protection budget which costs about the same as a small navy), then I’m glad he’s my friend.

    Reply
  4. Matt says:
    September 26, 2013 at 4:25 pm

    In all their gTLD applications, Donuts included an innovative mechanism for the protection of trademark holders, the “Domain Protected Marks List”. It even comes with a nice acronym: DPML.
    The application is clearly written, and very attractive to trademark holders: “The DPML prevents (blocks) registration of second level domains that contain a trademarked term (note: the standard for DPML is “contains”— the protected string must contain the trademarked term). DPML requests will be validated against the Trademark Clearinghouse and the process will be similar to registering a domain name so the process will not be onerous to trademark holders. An SLD subject to DPML will be protected at the second level across all Donuts TLDs (i.e. all TLDs for which this SLD is available for registration).”
    To show their commitment to the concept, Donuts have included the DPML concept in their public interest commitments both in March this year and the registry agreements they have signed so far. The problem is, the concept as described is flawed. It cannot be implemented in this way, without rendering the affected TLDs valueless and impossible to administer. Just think of any two or three character trademarked word. The potential of DPML to remove swathes of potential second level domains is significant. In addition, blocking all second level domains that “contain a trademarked term” effectively blocks legitimate third-party trademarks coexisting in different geographic regions and in different classes of goods and services. Why should Donuts be the arbiter of competing/overlapping trademarks, and why would they want to take on this responsibility? Registrars beware: no doubt they will pass this duty on (and liability) on.
    Donuts has tried to argue that “Trademark owners will have to buy a DPML listing for each string they want blocked, however. It’s not going to be a “wildcard” system. ING wouldn’t be able to block everything ending in “ing”.” This is not what their application, or subsequent public interest commitment, say at all. Their application was quite clear: at a minimum they have to submit a change request for their outstanding applications. How they will cope with the incoming onslaught of PIC claims from irate trademark holders, where they have already signed the registry agreement, is less clear.

    Reply
    • Kevin Murphy says:
      September 26, 2013 at 9:09 pm

      I disagree with your interpretation of the DPML as described in the applications. Seems to me it’s completely consistent with Donuts charging for each blocked string.

      Reply

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