by Tommy Ho

In our recent webinar on how to prepare fodpmlr the launch of new generic top-level domains (gTLDs), we reviewed the key things that trademark owners should consider when deciding on their approach to this program. One of the key considerations for proactively preventing trademark infringement in new gTLDs is whether to use domain blocking. With multiple new gTLDs launching each week, trademark owners shouldn’t delay in deciding if this is the right route for them.

What is domain blocking?

A domain is blocked when it is allocated but not delegated. This means the DNS name servers that allow the registrant to use the domain for a website or for email are not activated. Blocking is particularly useful when a trademark owner wants to protect their brand in an adult-oriented top-level domain (TLD) such as .xxx.

The Donuts DPML

The Donuts Domain Protected Marks List (DPML) provides blocking for an exact match of a trademark, or ‘contains’ terms (strings that contain an exact match of the mark along with other relevant keywords) for a minimum registration term of five years across all the Donuts-managed TLDs. Covering approximately 200 extensions (compared to a potential 600-plus open new gTLDs in ICANN’s overall program), the Donuts DPML could feasibly provide protection for a trademark in one-third of new gTLDs, for a single fee.

At the time of writing, a search of Interbrand’s top 100 global brands indicates that nearly a quarter of these company names have been blocked in the Donuts TLDs using a DPML block.

Is domain blocking right for my company?

There are several issues to bear in mind when deciding if the DPML is right for your company and trademark:

  • Donuts cannot provide a definitive list of its 200 TLDs at this time, although it has already signed close to one hundred registry agreements with ICANN and is halfway to its target number.
  • A Trademark Clearinghouse (TMCH) registration with proof of use is a mandatory pre-requisite for domain blocking. The signed mark data (SMD) file is required at the time the block is registered.
  • DPML is not a wildcard service. If a mark owner wishes to protect a mark name as well as other strings, each must be filed and purchased separately.
  • Any mark owner, including the DPML holder, may ‘override’ the block in a specific TLD, thereby activating the specific domain name as long as they provide a SMD with an exact match of the blocked term (applicable override and registration fees apply).
  • More portfolio registries are expected to launch blocking services soon. Demand Media, now rebranded as Rightside Registry, has already announced its DPML service, which provides blocking in more than twenty-five TLDs.

Overall, domain blocking is a worthwhile consideration for brand and trademark owners. It offers a simple, cost-effective and flexible way to protect trademarks in new gTLDs. And with these domains likely to form part of most brands’ “digital footprints” from 2014 onwards, domain blocking is a necessary added protection.

To request a DPML consultation with the CSC Brand Digital Services team, please visit cscglobal.com.

Further reading: For details on the data-driven approach to gTLD strategy that we are taking with our clients at CSC, please read our recently published piece on “How to make the most of new gTLDs without committing excess time and budget”)

Upcoming webinar: Rights Protection in New gTLDs and Rightside’s DPML

CSC and New gTLDs

CSC Digital Brand Services works with trademark owners around
the world to help them optimize their brands in the entire digital space, including new gTLDs. CSC is an accredited registrar and trusted service provider for the Donuts and Rightside registries. Our Brand Advisory Team, available to all CSC clients, is dedicated to helping our clients develop and implement successful Internet and domain name strategies.

To Block Or Not? For Trademark Owners Tackling New gTLDs, the Answer is Yes