The Trademark Infringement Expert Blog

Thoughts and commentary on overlapping issues between branding, trademarks, internet technology, and online marketing.

ALERT: Donuts Registrar Is Allowing Free DPML Overrides Now

The Donuts registrar company is allowing free Domains Protected Marks List (“DPML”) overrides currently, from May 22 to 31, 2016. As you may be aware, the DPML allowed mark holders to block their brand names from being registered as domain names or as portions of domain names at a fraction of the cost that would have been incurred if they’d defensively registered names.

Donuts Domain Names Trademarks

As I read their announcement on it, the override doesn’t mean that the protection comes completely off of the protected names during the period, but that a company may currently apply with no added fee to override the protection if the domain they’re seeking is an exact-match name to a mark they have already listed in the mark data file within the ICANN’s trademark clearinghouse.

How Donuts DPML Works

At-a-glance, this would appear to not really reduce the protection of trademark owners who already have names listed in the DPML. However, it does reduce protection a little for brands have protected a name that may be a subset of someone else’s brand name. For instance, if a fictional “Acme” company that sells cast iron tools had registered “ACME” in the DPML, then no one could register a Donuts domain for anything like “Acmetal.builders” because it contains the string, “ACME”. But, this free override period slightly reduces the hurdle for mark owners to override the DPML, so if the other fictional company named “AC Metal Builders”, a fabricator, came along, then they could apply for an override and nab the “Acmetal.builders” domain name and begin using it — which, I’m sure, might not be thrilling for the ACME metal tool company.

So, be aware that this period of free overrides could attract potential trademark problems with new domain names.

But, there’s generally already an issue due to the yearly growing total numbers of active trademarks, which make for ongoing conflicts involving name collisions in the domain name industry.

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