29 November 2016TrademarksMason Cole

Advertising feature: Blocking out online infringers

Managing a brand and trademark portfolio is a demanding undertaking that can require expert precision to prevent unsavoury characters and companies from stealing intellectual property. Tools are needed to help companies better manage their IP assets in a more expedient and comprehensive fashion.

Nowhere is a proactive IP defence and monitoring tool more necessary for success than on the internet. That is why Donuts, the world’s largest operator of new domain name extensions, created a way, via the Domains Protected Marks List (DPML) programme, for trademark owners to block their marks and related terms from registration by outside entities.

The DPML is an innovative service that allows trademark owners to protect their marks and related terms across all of Donuts’ new generic top-level domains (gTLDs) at a fraction of what it would cost to defensively register the same term in all of Donuts’ nearly 200 domain names. The DPML works by “blocking” a string of characters from registration at the second level (the characters before the dot).

The service is used by thousands of subscribers—several Fortune 500 companies, including Target, Verizon, Costco, Apple, HP, Microsoft and Amazon, have employed the DPML to proactively prevent trademark infringements. The DPML has helped these companies to effectively manage their internet portfolios and reduce legal and litigation costs.

In the more than three years since this service was launched, thousands of famous brands worldwide have subscribed. While the DPML is hailed as an innovative, cost-saving measure, feedback from trademark owners informed us that the service could be enhanced—particularly to include coverage of misspelled terms and to address a third-party mark owner’s ability to override the blocked term.

Accordingly, until December 31, 2016, Donuts is offering a unique opportunity to obtain DPML Plus, an enhancement of the legacy service that allows brand owners to widen their protection by:

Blocking common misspellings and variations of their marks;

Blocking their marks and related terms from registration for an initial ten-year period;

Including up to three additional strings (legacy DPML covers one string) that contain or are a common misspelling of the mark (additional terms or misspellings beyond the three strings are available to block for an additional fee); and

Blocking marks in premium second-level domains across all Donuts’ gTLDs.

"The DPML is an innovative service that allows trademark owners to protect their marks and related terms across all of Donuts’ new generic top-level domains (gTLDs) at a fraction of what it would cost to defensively register."

Additionally, DPML Plus blocks are not subject to overrides by other parties with the same trademark. DPML Plus subscribers may submit unlimited overrides of their own blocked terms (for no wholesale override fee) if they elect to register and use a previously blocked term.

Cost-effective service

Donuts’ suggested retail price for DPML Plus is $9,999 for the ten-year term (about the cost of one to two Uniform Domain-Name Dispute-Resolution Policy proceedings). The cost-benefit analysis is compelling:

At the average $32.99 retail cost for a registration in a Donuts TLD, it would cost almost exactly $6,500 per year to defensively register one term across 197 TLDs, and nearly $26,000 for four terms. Multiply that number by ten—the life of the DPML Plus service—and the total exceeds $250,000.

At a $9,999 retail price, DPML Plus blocks four terms for ten years, for an average yearly cost of $1.26 per term.

On October 1, 2016, Donuts announced upcoming price changes to our legacy service—on January 1, 2017, the price of our standard DPML will be increased in order to align the service’s benefits with its marketplace value. Existing DPML subscribers can renew their subscriptions at current pricing before January 1.

Trademark, brand and IP infringements are serious issues facing companies of every size, in every industry and in every location. Here Donuts has provided an innovative tool
that creatively addresses an ongoing need for brand owners.

The legacy and DPML Plus services are both available from Donuts-authorised registrars to trademark owners with their marks registered in the Trademark Clearinghouse.

Mason Cole directs public and industry relations for Donuts, the world’s largest operator of new domain extensions. He served as chair of ICANN’s Registrar Stakeholder Group and represented registrars as a member of ICANN’s policy council. He can be contacted at: mason@donuts.email

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