Introduction: registries and protected marks lists
Several registries provide an easy and affordable service to protect your brand name against misuse. The common term for those services is "Protected Marks List" and at the moment we know the Domains Protected Marks List (DPML) of registries Donuts and Rightside, and the Minds+Machines Protected Marks List (MPML) of registry Minds+Machines.
- Donuts is the biggest new gTLD applicant and applied for more than 300 extensions. Of them, almost 150 are unique and Donuts will get them for sure. The others are contested, but with Donuts' investment funds they will win many of those contention sets. Although we cannot commit to a number, Donuts expects to get management over at least 200 extensions.
- Rightside applied for 29 extensions of which 21 are uncontested.
- Minds+Machines currently covers 18 extensions.
With DPML you can block your brand name or a term including your brand name (Donuts and Rightside only) in all the registry's extensions for a fixed amount. Nobody (although exceptions apply, see below) can register these terms under those extensions. Your terms are protected for a fee much lower than when you would register all those domains.
Who can apply for DPML or MPML?
The primary requirement is that the Trademark Clearinghouse (TMCH) has validated your trademark. More information about the TMCH can be found on our website and in the dedicated section in our Knowledge Base.
Now it's time to decide which string you want to protect. Both DPML and MPML also accept strings which include your trademark, so an exact match is not required, as long as the exact trademark name is in the string to block. There are a few exceptions that are explained in this table with examples:
|Visa||visa||valid||Exact match of trademark|
|Visa||myvisacard||valid||Contains exact match of trademark (invalid for MPML as it is no exact match)|
|Vis||myvisacard||invalid||Contains exact match of trademark, but the trademark contains only 3 characters; only an exact match is accepted for 3-character trademarks|
|Vis||vis||valid||Is an exact match of the 3-character trademark|
|VI||vi||invalid||Trademarks with only 1 or 2 characters are not accepted|
Having decided which string to protect, you can order your DPML block. Of course you can order multiple DPML blocks, for example for your exact trademark visa and the string myvisacard that includes your trademark.
How do I order DPML?
If you are interested in ordering a DPML block, please contact your account manager via email@example.com. They will inform you about the price and required information.
Registering domains that are subject to DPML
Assume you have a trademark provider and you ordered a DPML block for the term openprovider. Nobody (see exception in the next paragraph) can register any openprovider.tld now for a TLD of the registry at which you ordered the DPML block. But the domains are not active either! Assume that you want to utilize the domain openprovider.guru. The DPML can now be overridden for this specific TLD: the domain is removed from the DPML block and registered, and you can start using it.
Another scenario is when you are the owner of the trademark openprovider, but you have no DPML block on this term. If your trademark is validated by the Trademark Clearinghouse and you have a valid SMD ('token'), then you can still register openprovider.guru - you will override the DPML block because you have the trademark.
- Update 2017-04-17: Rightside has announced that from this date onwards, only the DPML block owner can register a domain name blocked by his DPML block. Another trademark holder, however, can request such an override as well, but the DPML block owner must explicitly approve it.
Note that in both cases an additional 'override fee' is charged. Contact your account manager (firstname.lastname@example.org) if you want to override your own or somebody else's DPML block.
Some things are good to know before ordering a DPML block; we got questions about the following topics:
- Registries: although both registries call it DPML, the DPML of Donuts is a different product than the DPML of Rightside. If you want to protect your trademark in all TLDs of both registries, two separate DPML orders are required. MPML is a third separate order.
- Order period: initially the DPML block is ordered for a period of 5 years for the Donuts DPML and MPML, or 1 year for the Rightside DPML. After this initial period, renewal is possible for a period of 1 to 10 years (DPML) or for a period of 5 years (MPML).
- A valid Trademark Clearinghouse entry should be available at all times: you cannot order TMCH for only one year and DPML for 5 years. The DPML will be cancelled (without refund) if your brand is no longer in the TMCH. Of course, if you order TMCH for one year and renew it annually, your DPML block remains valid.
- Exempted domains: per extension the registry reserves the right to mark certain domains as premium or blocked domain names. Those domains are not subject of the DPML block. For example, if openprovider.shop is a premium name, then a DPML block on openprovider will block the term openprovider in all TLDs except openprovider.shop. But: if you ordered DPML before the term was marked 'premium' by the registry, then this term is included in the DPML block! Another exception is a domain that was already registered: if openprovider.shop is registered before you apply for the 'openprovider' DPML block, then the block includes all TLDs except .shop. By the way, while DPML does not include premiums, MPML does include them.
- IDNs are allowed as well, as long as they are in a character set that is supported by the registry. Note that because of the TMCH rules, a trademark is an exact match. If you submitted your trademark señor to the TMCH, you can order a DPML block for señor and señorita, but not for senor.
- The DPML block is automatically extended to any new extensions that the registry might get. For example in a next round of new gTLDs, or because the registry buys an extension from another registry.
- Any other questions? Contact your account manager or check the DPML info pages of Donuts and the MPML info pages of Minds+Machines.
Extensions covered by DPML
The list of extensions below are all applied-for extensions. Some are in contention and might be assigned to another registry. In that case, DPML does not cover that extension anymore.
|Donuts DPML||Rightside DPML||Minds+Machines MPML|
Managed by Donuts
Depends on contention set resolutions
Managed by Rightside
Depends on contention set resolutions
Managed by Minds+Machines