Donuts’ service is not cheap, but it’s much easier and cheaper than the alternative.
Donuts, applicant for over 300 top level domain names, has launched its “Domains Protected Marks List” offering to trademark holders.
The service allows trademark holders to block the registration of second level domains that contain their mark across all of Donuts’ domains. In order to qualify, the trademark must be registered with the Trademark Clearinghouse. Companies with generic/premium or three letter domain names might not be able to use the service.
A quick Google search shows that a couple participating domain name registrars are already selling the service. Both Encirca and 101Domain offer a five year block for about $3,000. If Donuts ends up procuring 200 domain names, that comes out to about $3 per domain per year.
The service only blocks the domains from registration. The trademark holder does not get to use the domain names. However, companies that use the service can pay extra to activate the domains. For example, Pizza Hut may pay for the block but then also pay to register and use PizzaHut.pizza.
Some brands may still want to register domains instead of block them because other companies that have trademark rights to a blocked domain can “override” the block and register them. This is particularly the case with more generic terms.
The blocking service seems like a good value for popular brands that have already made great efforts to procure a second level domain in most of the hundreds of existing top level domain names. For second level domains companies haven’t registered in .info, .biz, .uk, etc., it probably doesn’t make sense.
Although I’m sure some will cry “extortion”, I bet Donuts could make more money by not offering this service and requiring companies to participate in individual sunrises.
Domainer Extraordinaire says
I cry extortion.
ChuckWagen says
The world is soon going to require a whole lot more IP lawyers.
DNSR says
Excellent… Jk.
Seriously I wouldn’t be surprised if many companies don’t use this and instead just turn to the method of bringing those who register infringing domains into court in one group. Sure you spend $2K in filing fees in federal court, but its pretty open and shut on most of them. Spend $2K, end up with $100K in damages. To be honest, this doesn’t seem like it should be a service that they’re selling. Registrars should have no interest in allowing anyone other than Pizza Hut from registering PizzaHutPizza.pizza
KD says
Will this block just the exact match or longer domains like PizzaHutStore.pizza and MyFacebook.web
Anthony Beltran says
KD – You are able to block any string that contains the exact match of the TMCH validated trademark. For “Pizza Hut”, you would be permitted to block PizzaHutStore.TLD, MyPizzaHut.TLD, and PizzaHut.TLD.
For TM holders that already spend tens of thousands of dollars a year with the vast array of TLDs already available for defensive purposes and actual usage, this is an extraordinary tool to take out nearly 1/3 of the new gTLD program for $600/year.
Additionally, it allows them to unblock and use one or more of the names if they desire at any time.
Andrew Allemann says
Just one second level domain per block. So you can block PizzaHutStore.everything, but that costs another three grand.
M.G. says
Huge advantage for two-letter brands, such as BP, EA and other corporation holding their two-letter .com names, as all two-letter names will be blocked in new gTLD. It is not just about savings, but the most important is that there will be no confusions with new gTLD for these brands. They actually don’t even have to apply their trademarks with Trademark Clearinghouse (TMCH), as nobody will register their matching names anyway…
Andrew Allemann says
It’s only a matter of time before registries will be able to sell most of these domains.
M.G. says
Why you think so? Those names are blocked by ICANN in the Agreement. Two letters tags are blocked due to possible confusions with ccTLD extensions, current and future as well. They will not be released, not soon, nor later.
Andrew Allemann says
In recent years they’ve been released on .org. .biz. etc. There’s even a provision in the agreement on what registries need to do in an effort to release them.
Scott Neuman says
If I was the trademark holder, I’d just sue each and every trademark infringer for $100,000 plus legal fees. Buyer beware.
kd says
Andrew – in looking at this
http://trademark-clearinghouse.com/sites/default/files/files/downloads/TMCH_fee_structure_20-04-2013.pdf
It looks like you can have up to 10 “domain name labels” per trademark. I wonder what the labels are and how that would translate to the different registries.
Andrew Allemann says
The Trademark Clearinghouse and Donuts block service don’t have the same rules. Donuts just made it a prerequisite that the trademark also be accepted by TMCH.
Ultimately the TMCH will allow up to 50 strings that include the trademark in it. Donuts rule is you can block basically any string that contains the trademark…e.g. PizzaHut.tld, PizzaHutStores.tld, etc.