Domain Blocking Programs: Domains Protected Marks List (DPML) Primer

The launch of the new generic Top-Level Domains (gTLDs) has ushered in a new era of naming conventions. This creates new opportunities for marketing and branding opportunities both small and large corporations, but it also exposes them to new challenges online.

As the list of available extensions grows, brands now face an uphill challenge of identifying, registering and defending their brand against cybersquatting. With that in mind, several Domain Registries – Donuts, Uniregistry, ICM and Minds+Machines – have each launched a Domains Protected Marks List (DPML) to provide a mechanism for blocking unauthorized third parties for registering domain names that infringe upon a legitimate Registrant’s trademark.

What is the Domains Protected Marks List?

A DPML is a proactive rights protection mechanism offered through specific registry operators which prevents non-rights holders from performing infringing domain registrations across all offered domain extensions.

By purchasing a single product at a fraction of the cost of performing copious traditional defensive domain registrations or pursuing URS or UDRP proceedings, a DPML registration is extremely cost effective. A DPML registration covers ALL new gTLD extensions offered by the respective registry, for one fee.

A DPML registration is available to all Trademark Clearinghouse Enrollees who subsequently possess a current and valid SMD file.

How much does DPML cost?

DPML pricing varies based on provider and length of registration.

What gTLD extensions are protected by a DPML block?

The available DPMLs prevent (block) domain registrations across a combined 250 extensions that range from .academy to .careers to .financial to .shoes to .zone. It is estimated that existing DPML products will ultimately cover between 300 to 350 gTLD extensions.

• Donuts: 238 domain extensions
• Minds+Machines: 18 domain extensions
• Uniregistry: 26 domain extensions
• ICM: 4 extensions

New extensions will be added to what is covered by each registry’s DPML product as new domain extension are brought to market. Each registry’s DPML product will cover all extensions currently offered, including those extensions that come to market after a DPML is purchased.

How does a DPML block work?

1. In order to secure a DPML block, a trademark owner must first validate their mark with the Trademark Clearinghouse. This step ensures that the applicant for a DPML block does in fact also possess a valid trademark for the label the DPML block would be applicable for.
2. Once validation is complete, the trademark owner will be granted a Signed Mark Data (SMD) file.
3. A party that possesses an SMD file for a particular mark will be authorized to purchase a DPML block subscription for that same matching mark.
4. A DPML block is not a domain registration – conceptually it is the opposite. A DPML block prevents registrations for being allowed for domain names that match or contain a trademark.
5. Once you own a DPML block subscription, no third party will be able to perform domain registrations that contain or exactly match your submitted marks*. Typos cannot be blocked.

*A DPML block does not prevent another validated Trademark owner from being able to perform future registrations of domains also matching their mark.

Note that DPML blocks are only valid as long as the DPML owner also has an active subscription to the Trademark Clearinghouse.

DPML PLUS

DPML PLUS, available for domain extensions offered by Donuts, Uni, and ICM Registry, provide even more features than a standard DPML:

1. Prevent registrations of additional strings across all current and future domain extensions offered by the respective Registry
2. Blocks more names than a regular DPML – both standard AND premium names
3. Option to block additional variations for an additional fee

Additional DPML Block Rules:

1. One and two character terms: These cannot be blocked by the DPML. Three letter characters can only be blocked if it is an exact match of a submitted mark.
2. Existing domain registration: Domain names registered prior to a DPML block going into effect will remain unblocked. If the domain name is not renewed, it will automatically be covered by the DPML.
3. Premium and Reserved Names: Premium domain names reserved by Donuts Inc. and ICANN will not be covered by domain blocks.
4. Other Sunrise Rights: Other TMCH applicants will be able to utilize their SMD file to register a domain name covered by a DPML block during the Sunrise Period. However, the block will automatically be applied if the domain name is not registered during the Sunrise Period.

DPML and Sunrise Registrations

Other trademark owners that have successfully enrolled their marks into the TMCH will be able to register domain names during the Sunrise Phase. This allows them to circumvent the block, provided that the domain name they are registering matches their enrolled trademark. If the domain name in question is not registered during the Sunrise Period, the DPML block is automatically applied to it at the conclusion of Sunrise.

What if I want to use a blocked domain name?

Valid trademark owners have the option of unblocking domain names through an override. In order to successfully override a DPML block for a particular domain name, brands need to submit their TMCH validated trademark and SMD file to their TMCH agent. DPML blocks can be submitted at any time, as long as the DPML submission is still active. Third parties who are not valid mark owners cannot unblock or otherwise circumvent a DPML.

For more information on the DPML, contact Webnames Corporate at 1-866-470-6820 or email corporate@webnames.ca.

gTLDs protected by DPML

Donuts

Minds+Machines

Uni (Uniregistry)

ICM Registry