From HEXONET Wiki
Domains Protected Marks List (DPML)
Donuts Inc., one of the largest portfolio applicants of new gTLDs, has launched a brand new domain-blocking program designed to help companies protect their brands and IP rights. DPML stands for Domains Protected Marks List. The DPML program prevents cybersquatting by allowing brand and trademark owners to block all second level registrations across all Donuts TLDs with one trademark submission! DPML protects trademark holders at a fraction of what it would cost to defensively register all Donuts TLDs individually. Donuts has applied for over 300 new gTLDs and is estimating to open over 200 new gTLDs.
OverviewDPML Applications can be submitted directly through HEXONET. Prior to submitting a DPML Application, the trademark holder must first register a mark with the Trademark Clearinghouse (TMCH), a service that HEXONET also provides. The mark must be registered according to the "use" standard, which is the same standard for registration during the Sunrise period. Once the TMCH has validated a mark, a SMD File (signed mark data file) will be issued, which can be used to submit a DPML Application. Each DPML Application must (i) include one or more SMD files corresponding to the applied-for label(s) and (ii) meet the qualifications specified by ICANN and detailed in the TMCH Guidelines (may change from time to time). Once the DPML subscription is complete, the trademark term is blocked from registration in all Donuts' TLDs for an initial period of five years. It is important to remember that a block is not a registered domain. Therefore, it cannot be used for a website or for email, and it does not resolve. |
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Benefits for Trademarks Registered with DPML
Sunrise Services - TMCH
- Brand owners can not only protect their trademarks, but also keywords that contain the trademark.
- Using the DPML is a more cost effective alternative to defensively registering multiple domain names
- Single registration covers ALL of Donuts' new gTLDs.
- Convenient 5-year term reduces the headaches of having to renew each year (longer terms available).
- DPML block can be removed (on a per TLD basis) should the trademark holder decide to register the domain (resolve) for use.
Are there any exclusions?
Previously Registered Domains: A term will not be blocked in any TLD where that term is already registered as a domain. If a domain is initially excluded from DPML because it is already registered, a rights holder may still subscribe to DPML (and block the term in all other Donuts TLDs). If the previously registered domain expires or is deleted, DPML protection will then automatically apply to that TLD.
Premium Domains: In Donuts TLDs, most domains are priced as standard. However there are a limited number of higher-priced premium names. DPML blocks terms for standard priced names only.
Other Sunrise Rights: Another trademark holder with Sunrise rights for a term may register that term as a domain name, even when a DPML subscription exists for it. This is known as a “DPML Override”.
What is a DPML Override?
A DPML block on a specific domain may be overridden and the domain registered by a mark owner with Sunrise rights to the applicable domain (a “DPML Override“). A DPML Override can be performed at any time and can be initiated by a mark holder of the DPML blocked term. The party performing an DPML Override must have an exact match, Sunrise-eligible trademark for the domain (i.e., the overriding party must have a valid SMD File issued by the TMCH).
Is there Whois output for DPML?
Yes, the Whois output identifies the DPML block holder for the blocked domain and states that the domain is blocked from registration.
Do DPML account holders need be current in the TMCH? Yes. The trademark should remain current in the TMCH throughout the life of the DPML block. Donuts may elect to remove a DPML block for certain domains if the corresponding mark is not kept current in the TMCH.
Are there character limitations?
One and two character DPML terms are not permitted. Three character DPML terms are permitted but only as an exact match of the trademark.
DMPL Services in Control Panel
You can access a general overview (history) of your DPML block creations by going to Manage Products / Domain Block / List Domain Blocks. Please note: all successful DPML block creation requests lead to a regular domain with the extension '.dpml.zone'. The domain will be visible in the domain list about 10 minutes after the successful DPML block creation. The contact details, creation date, expiration date can be reviewed in the domain list. The DPML block can basically be updated and renewed like a domain.
1) If we register a domain that is already blocked by a DPML, will the requesting registrar get charged the override fees + registration fees?
Correct--The override fee is the same cost as the sunrise participation fee, so you can think of it as an everlasting sunrise for SMD holders.
2) Is there any notification that an override fee is going to be charged?
Registrars receive the amount of the override fee in the domain:check command.
If any registrar submits a valid SMD file at any time (during sunrise or after), and that name is blocked by a DPML, the registrar will be notified that an override fee will occur, and that registrar has to accept the fee before the override can occur (domain registration is completed). If the registrar accepts the fee and proceeds with a registration, they will be charged an override fee. but they will have a warning.
3) Are override fees charged during a sunrise registration? During Sunrise, registrars are already obliged to submit a SMD file so if someone has already blocked a domain through a DPML, will they be charged an override fee along with the sunrise participation fee?
No override fee occurs during sunrise. If you have a valid SMD and use it during the sunrise phase you only pay the Sunrise Participation Fee (which happens to be the same amount as the override fee).
4) What are the restore fees of a DPML block ? Does it include a 1-year renewal ?
If the block is restored during the regular lifecycle of the Restore-Grace-Period, the fee is $40 plus a one-year renewal, just like a domain name. If the block is not restored inside the RGP, regular prices apply for a "new" block.
5) You say we should warn our client if he request a DPML on a premium name (the block will not be valid). Will Donuts provide a list of premium names ?
Yes, Donuts will provide to Registrars a list of all premium names as soon as those lists are complete. As a guideline, generally, the terms on the premium list will be generic terms. For example we will not put "BMW" on the premium list.
The API commands for the Trademark Clearinghouse are listed below.
- Create Trademark - CreateTMCHMark
- Trademark Status - StatusTMCHMark
- Query Trademark List - QueryTMCHMarkList
- CreateTMCHMark
[COMMAND] command = CreateTMCHMark order = CREATE | REPLACE | UPDATE orderid = <INT> marktype = <TEXT>| <NULL> markname = <TEXT> | <NULL> goodsandservices = <LONGTEXT> | <NULL> goodsandservices# = <LONGTEXT> | <NULL> trademark-jurisdiction = <COUNTRY> | AP | BX | EM | EP | EU | GC | IB | OA | OT | QZ | WO | <NULL> trademark-class# = <INT> | <NULL> trademark-registrationnumber = <INT> | <NULL> trademark-registrationdate = <DATE> | <NULL> # trademark-expirationdate = <DATE> | <NULL> period = <INT> | <NULL> label# = <TEXT> | <NULL> label0smdinclusion = <INT> | <NULL> label0claimsnotify = <INT> | <NULL> label1smdinclusion = <INT> | <NULL> label1claimsnotify = <INT> | <NULL> label2smdinclusion = <INT> | <NULL> label2claimsnotify = <INT> | <NULL> label3smdinclusion = <INT> | <NULL> label3claimsnotify = <INT> | <NULL> label4smdinclusion = <INT> | <NULL> label4claimsnotify = <INT> | <NULL> label5smdinclusion = <INT> | <NULL> label5claimsnotify = <INT> | <NULL> label6smdinclusion = <INT> | <NULL> label6claimsnotify = <INT> | <NULL> label7smdinclusion = <INT> | <NULL> label7claimsnotify = <INT> | <NULL> label8smdinclusion = <INT> | <NULL> label8claimsnotify = <INT> | <NULL> label9smdinclusion = <INT> | <NULL> label9claimsnotify = <INT> | <NULL> holder0entitlement = owner | co-owner | assignee | <NULL> holder0organization = <TEXT> | <NULL> # holder0name = <TEXT> | <NULL> holder0street = <TEXT> | <NULL> holder0city = <TEXT> | <NULL> holder0state = <TEXT> | <NULL> holder0zip = <TEXT> | <NULL> holder0country = <COUNTRY> | <NULL> holder0phone = <PHONE> | <NULL> holder0fax = <PHONE> | <NULL> holder0email = <EMAIL> | <NULL> EOF
- StatusTMCHMark
[COMMAND] command = StatusTMCHMark id = <TEXT> | <NULL> EOF
- QueryTMCHMarkList
[COMMAND] command = QueryTMCHMarkList (optional) markname = <TEXT> | <NULL> marktype = <TEXT> | <NULL> status = <TEXT> | <NULL> first = <INT> limit = <INT> orderby = <TEXT> wide = 0 | 1 | <NULL> mincreateddate = <NULL> | <TEXT> maxcreateddate = <NULL> | <TEXT> minupdateddate = <NULL> | <TEXT> maxupdateddate = <NULL> | <TEXT> minexpirationdate = <NULL> | <TEXT> maxexpirationdate = <NULL> | <TEXT> EOF
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What is the Trademark Clearinghouse?
The Trademark Clearinghouse is a global repository for trademark data, the first of its kind in the domain name space. Designed to meet global needs for the domain name system (DNS), the Trademark Clearinghouse providers will: (i) verify trademark data from multiple global regions; and (ii) maintain a database with the verified trademark records.
The verified data in the Trademark Clearinghouse will be used to support both Trademark Claims and Sunrise Services, required in all new gTLDs. The Clearinghouse will play an important role in the New gTLD Program and in the ongoing protection of trademark rights.
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When will the Trademark Clearinghouse be up and running?
Verification services for the Trademark Clearinghouse is now available. Rights holders can submit their trademark data into the Clearinghouse before any new gTLD registries are performing domain name registrations.
Support for the Sunrise and Trademark Claims services to be offered by new gTLD registries is planned to be available beginning in Q3 2013.
For more information, see about Trademark Clearinghouse
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How do I get access to the Trademark Clearinghouse?
Access the Trademark Clearinghouse website here
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What are Trademark Claims and Sunrise Services?
Sunrise services allow trademark holders an advance opportunity to register domain names corresponding to their marks before names are generally available to the public. New gTLD registries are required to offer a Sunrise period of at least 30 days.
The Trademark Claims period follows the Sunrise period and runs for at least the first 90 days of an initial operating period of general registration. During the Trademark Claims period, anyone attempting to register a domain name matching a mark that is recorded in the Trademark Clearinghouse will receive a notification displaying the relevant mark information.
If the notified party goes ahead and registers the domain name, the Trademark Clearinghouse will send a notice to those trademark holders with matching records in the Clearinghouse, informing them that someone has registered the domain name.
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What will the Trademark Claims notice that a registrant receives say?
You can review a PDF sample notice here: Trademark Claims Notice [PDF, 163 KB]
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What languages will be serviced in Trademark Clearinghouse?
The Trademark Clearinghouse is a global database and will accept trademark data from all over the world, supporting users in multiple languages. See the Trademark Clearinghouse website for more details.
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Is there a cost to use the Trademark Clearinghouse?
Yes. The parties using the services are responsible for paying for their costs. For example, trademark holders will pay for verification of data by the Clearinghouse. Detailed cost information is available on the Trademark Clearinghouse website.
Registries or others using the data to support Sunrise and Trademark Claims services will also pay fees for this use.
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What trademarks are eligible for entry into the Clearinghouse?
Four types of marks are eligible for inclusion in the Clearinghouse:
- Nationally or regionally registered word marks from all jurisdictions
- Word marks that have been validated through a court of law or other judicial proceeding
- Word marks protected by a statute or treaty in effect at the time the mark is submitted to the Clearinghouse for inclusion
- Other marks that constitute intellectual property may be recorded in the Clearinghouse by arrangement with a registry
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What information do I need to provide when registering my mark in the Clearinghouse?
You will need to provide information about yourself and the trademark holder if that is someone other than you. This will include your contact information as well as information stating whether you are the trademark holder, someone representing the trademark holder, such as a law firm, or someone to whom the trademark has been licensed or assigned.
You will need to provide the trademark information, the class of goods or services, the jurisdiction where the trademark is registered, and other relevant information according to the type of trademark being submitted.
If you plan to use the Clearinghouse records to register names in new gTLD Sunrise periods, you will need to submit proof of use for the trademark.
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What is proof of use?
Proof of use allows you to participate in registry Sunrise periods. For verification of proof of use you must submit:
- A declaration stating that the trademark is indeed being used as you say it is.
- A sample, such as an advertisement, a branded product, or some other example showing the mark in use.
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Is proof of use required for admission into the Clearinghouse?
No. However, proof of use is required if you wish to use the Clearinghouse record as a basis to register domain names during a Sunrise period. Rights holders may submit proof of use at the time they initially record their rights data in the Clearinghouse, or at a later time.
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Does putting my trademark in the Clearinghouse mean that I automatically get my trademark as a domain name in all new gTLDs?
No. The Clearinghouse verifies and maintains information from many jurisdictions and classes of goods or services, and many parties may have legitimate rights in the same trademark. Allocation of domain names in a particular TLD occurs according to the registry policies for that TLD.
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Will different variations of my trademark be protected?
The domain names associated with a Clearinghouse record are generated according to a defined set of matching rules. When you submit your information to the Clearinghouse, part of your file will consist of the different domain names corresponding to that record.
Up to 10 domain names corresponding to one trademark record are included in the initial cost of verification by the Clearinghouse. If there are more than 10 domain names corresponding to the record, you can pay an extra fee to have these additional names associated with the record.
Refer to the Explanatory Memo on Matching Rules[PDF, 194 KB] for detailed information.
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If two different rights holders have the same trademark in two different countries, then how does the Clearinghouse decide between them?
The Clearinghouse is a repository of data only, and trademarks from many jurisdictions can coexist in the Clearinghouse. Clearinghouse processes are designed to confirm the validity of data, not to make determinations on the substance or scope of rights held by a particular party.
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I have applied for a trademark, can I include it in the TrademarkClearinghouse?
No. Protections afforded to trademark registrations do not extend to applications for registrations, marks within any opposition period or registered marks that were the subject of successful invalidation, cancellation or rectification proceedings.
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When will the Strawman be available?
This capability is still being developed; more information will be available soon.
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If I am having problems with my Trademark Clearinghouse account, where do I go?
Customer support can be found on the Trademark Clearinghouse website.
