October 2013
Fact Sheet: Donuts’
Domains Protected Marks
List (DPML)
Donuts, applicant for 307 new Top Level Domains, has created a new domain name blocking
mechanism, a “Domains Protected Marks List” (DPML) for trademark owners. This is in addition to
the Rights Protection Mechanisms required by ICANN (Sunrise and Trademark Claims, and the URS
and UDRP). While our clients would still prefer to avoid defensive registrations altogether, Donuts’
DPML might provide some economies of scale worth considering for key brands. Below we describe
what we know about this domain name blocking tool, and those of a few other applicants.
What is the DPML?
The DPML is a Right Protection Mechanism specific to Donuts’ new gTLD registries. The DPML allows
trademark owners to block their marks and related terms, at the second level, in all of Donuts’ new
gTLDs, for one fee. The DPML is designed to be an economical way for trademark owners to protect
their rights from getting into the hands of cybersquatters. With the DPML it is not necessary for
trademark owners to take out defensive registrations in each of Donuts’ gTLDs. While the DPML
may be imperfect, recall that it is voluntary.
How much will a DPML block cost?
A DPML block across all Donuts’ gTLDs will normally cost USD $2,995 for an initial five year term. We
intend to offer discounts to clients though; contact us for more details.

If Donuts ultimately operates 200 new gTLDs, the per-gTLD price works out to $3 per mark,
per year over the term of the 5-year block, or $15 per mark for the full 5 year term.

If Donuts ends up running 300 new gTLDs, the per-gTLD price works out to about $2 per
mark per year over the term of the 5-year block, or $10 for the full 5 years.
While you may not have infringement concerns in all Donuts gTLDs (which span the dictionary from
“.art” to “.limo” to “.shoes” to “.zone”), bear in mind that Sunrise registration is $80 per gTLD and
you will incur annual renewal fees. To compare: at an average $10 per year (Donuts’ fees range
from $7 to $33), via Sunrise, you would only be protecting your mark in 23 gTLDs over five years.
How many gTLDs will a DPML block cover?
Donuts applied for 307 new gTLDs, and estimates that it will operate “at least 200” of those (150 of
its applications are uncontested; the rest will be subject to auction, so they will not win them all). A
full list of Donuts’ applied-for gTLDs is at www.donuts.co/dpml/tlds. Each DPML block applies across
all gTLDs operated by Donuts and unfortunately cannot be applied to a subset of Donuts gTLDs.
www.comlaude.com
Information current as of October 2013
Which terms are eligible for a DPML protection?
In order to obtain a DPML block, the domain name you are seeking to block must be based on a
trademark that has been validated for use by the Trademark Clearinghouse (more information at
www.comlaude.com/trademark-clearinghouse). The domain name you wish to block must either
exactly match your mark, or exactly contain the mark. Typos cannot be blocked.
Mark
Permitted Blocks
Prohibited Blocks
APPLE
apple.tld
appleipad.tld
applestore.tld
app1e.tld
appple.tld
IBM
ibm.tld
ibmjobs.tld
VERIZON
verizon.tld
verizoniphone.tld
ver1zon.tld
veriz0niphone.tld
*** Be aware that your mark must remain current in the TMCH throughout the life of the DPML.
Because the TMCH was primarily designed to facilitate Sunrises and Trademark Claims notices, many
trademark owners have initially elected 1 or 2 year TMCH lifespans to reduce costs; it may be
necessary to revisit this strategy since Donuts has reserved the right to remove a DPML block for
certain domains if the corresponding trademark is not kept current in the TMCH.
Are there any terms that cannot be blocked under the DPML?
Yes, unfortunately for brand owners, the DPML has some limitations on typos and short marks.
i.
One and two-character terms: These cannot be blocked under the DPML. Three-character
terms can be blocked but only as an exact match of the mark (see IBM example above).
ii.
Previously Registered Domains: A term will not be blocked in any gTLD where it is already
registered as a domain name. This creates an early incentive to opt for a DPML on your key
mark(s). If a term is excluded from applying a DPML block because it is already registered,
mark owners may still subscribe to the DPML to block the term in all other Donuts gTLDs. If
the prior-registered domain name is not renewed, a block will then automatically be applied
for your mark in the relevant gTLD. (It is possible to check to see if a term has already been
registered as a domain name in a particular gTLD prior to purchasing a DPML block.)
iii.
Premium Reserved Names: Donuts has said it will reserve a few hundred premium names in
each gTLD (these may be terms like “payday.loans” or “delivery.pizza”) that cannot be
blocked using the DPML. These terms must be bought at Donuts’ market rates.
iv.
Other Sunrise Rights: Any Sunrise-eligible trademark holder can override and “unblock”
your blocked term. This override will cost $80 plus normal registration fees, and works both
ways, i.e., just as a third party can override and use a term you want blocked, you can
unblock and use a term another mark owner had previously blocked. You cannot prevent
this from happening and do not get a refund, but will get a notice once it occurs.
www.comlaude.com
Information current as of October 2013
Can I use DPML-blocked domain names for my website or email?
A DPML block means that the domain name is not functional, meaning it may not be used for a
website, e-mail address or other DNS-related functionality. You do however have the option of
unblocking a particular domain name for use, while leaving that term blocked in all other Donuts
gTLDs. This is only possible for an exact match to your mark, and your TMCH-issued SMD file must
be current. As with “Other Sunrise Rights” above, there is a one-time override charge of $80 per
domain, plus the normal annual registration fee.
How long are terms blocked for under the DPML?
Once a mark is accepted for the DPML, that term is blocked from registration in all Donuts gTLDs for
an initial five year period. A DPML subscription can be renewed in increments of one to ten years
(for $600 per additional year), but is only good if Donuts continues to operate the gTLD.
What are Donuts’ first gTLDs to launch, and when?
Donuts has said that it plans to launch 20 gTLDs in 2013, beginning with .camera, .clothing,
.ventures, .lighting, .singles, .voyage, .guru, .holdings, and .equipment; .sucks and .wtf will follow.
What do our experts advise?
Donuts did not have to create the DPML. It isn’t perfect, but it might help some brand owners in
appropriate cases, though many tell us they feel uncomfortable with the cost.
Questions we are asking in trying to help clients decide whether and to what extent the DPML is a
good fit for their enforcement objectives include:






Are you concerned that other brand owners operating in other goods & services sectors will
override and unblock your DPML block?
o If so, whether in addition to or in lieu of a DPML, you might need to consider paying
for a Sunrise registration – if there are too many “Sunrise-necessary” scenarios the
DPML might start to lose its appeal for a mark
Do you want to or need to use your brand in a Donuts gTLD?
o If so, you will have to go through Sunrise or override your own block as
DPML-blocked terms cannot be used for a website or email
Does your mark consist of three characters?
o If so, recall that you can only block exact matches, not a mark+plus variation
How many marks do you have in your portfolio?
o A portfolio of one or two marks is easier to justify as a DPML than 10 or 20 and so on
How many of Donuts gTLDs concern you from an infringement perspective?
o In matching your concerns to Donuts’ gTLDs, are you really concerned about
“brand.baseball” or “brand.florist”, even “brand.rentals” or “brand.yoga”?
o Bear in mind though that Donuts also applied for “sucks” and “wtf”, buying those
two strings alone in Sunrise plus 5 years registration fees will cost you $260 per mark
Have you applied for your own TLD for your key marks?
o If so, the DPML might make sense, if at all, only for one 5-year cycle while you look
at ways to migrate your portfolio to your own TLD
o If not, the DPML might make sense, at least for one 5-year cycle, while the new gTLD
dust settles and you take stock of your enforcement tolerances and budget
www.comlaude.com
Information current as of October 2013
Other Registry-specific Rights Protection Mechanisms
Aside from Donuts, these are the applicants we are aware of that are offering some kind of Rights
Protection Mechanism beyond the ICANN minimums.
We think Uniregistry and ICM should be applauded for making their voluntary blocks cost-recovery
and cost-free (if you already have a “Sunrise B .xxx block”) respectively.
For Google’s 40+ open registration model applications:
i.
ii.
a 60-day Sunrise (instead of the 30 days mandated by ICANN)
on-going Trademark Claims notices
For Uniregistry’s 50+ open registration model applications:
i.
a cost-recovery Sunrise block across each Uniregistry gTLD
a. this also covers certain (as yet undefined) typo variations
ii.
a “once and for all” block for current and future Uniregistry gTLDs
For ICM’s three (.sex, .porn, .adult) applications:
i.
an automatic block, for no additional fee, of any second-level name
already defensively blocked in .xxx (under “.xxx Sunrise B”)
To reserve your brand using the DPML, or to find out more about our service, email us at
[email protected].
--
ENDS
For more information, please contact [email protected].
Com Laude
28-30 Little Russell Street
London WC1A 2HN
T: +44 20 7421 8250
W: www.comlaude.com
www.comlaude.com
Information current as of October 2013