Avalanche Preparedness: Blocking Service Now Available for Many New Generic Top-Level Domain Names

Fish gTLD Alert

Avalanche Preparedness: Blocking Service Now Available for Many New Generic Top-Level Domain Names

In the coming months, the first of more than 1,000 new generic top-level domain (gTLD) names, ranging from .beer to .phd, will be launched. Some newgTLDs will be restricted to certain brand owners or have other eligibility requirements, but about 600 will be open to the public. With so many new "lands" in which to stake a claim, brand owners are anxious to learn the rules that will establish law and order. While several mechanisms exist to protect trademark rights, many brand owners remain fearful.In response to brand owners' concerns, Donuts, Inc., which applied for over 300 new gTLDs, has announced that it will provide a blocking service that will make particular domain names unavailable to the public for all gTLDs it operates. At first glance, imposing more restrictions on the general public in favor of brand owners may appear to be contrary to a registry's business goals of selling second-level domains. But Donuts is taking the concerns of brand owners seriously. Donuts is calling its service the Domain Protected Marks List (DPML), and it is currently available.

To obtain a block, a trademark owner must first record a mark in the Trademark Clearinghouse and have use of the mark verified by the Clearinghouse. Once part of the Clearinghouse database, trademark owners can then submit through participating registrars any domain name they wish that contains the recorded mark to be blocked. So "yahooo" with an extra "o" could be blocked based on the Clearinghouse record for "Yahoo," but "yahhoo" would not be eligible, as it does not contain the exact mark. Marks eligible for the DPML must also be at least four characters long. So while IBM is eligible for recordation in the Trademark Clearinghouse for other rights protection mechanisms, it is not eligible for the DPML.

Eligible domains will be blocked and unable to be registered as a domain name by third parties across all new gTLDs operated by Donuts. The trademark owner can decide later to register its own blocked domains, either during the sunrise registration period for the particular new gTLD or by requesting an override.

There are two admitted difficulties to the DPML system. First, it cannot be used to defend against cybersquatters who exploit common misspellings of domain names because the misspelled domain sought to be blocked will not match the Clearinghouse record. Second, for a given mark, there may be dozens of variations eligible for blocking that a would-be cybersquatter might exploit. Each variation is a separate submission, so trying to block them all could become very costly.

The cost varies by registrar, but is approximately $3,000 for 5 years and $5,700 for 10 years, per second level domain. Brand owners should review the new gTLDs that Donuts has applied for and decide if the blocking service is worth the cost. The DPML is one of many options available to brand owners. The challenge is to tailor an approach using various mechanisms, both new and traditional, and form a defensive strategy against what may feel like an avalanche of new gTLDs starting this winter.

General information about the new gTLD program can be found on Fish’s Domain Names resource page. If you have any questions, please contact your Fish & Richardson attorney or:

Keith Barritt

Jerre B. Swann, Jr.
Of Counsel