IBM activates the Donut’s DPML block after filling a URS complaint for ibm.ventures and ibm.guru

IBM filed a URS complaint at the National Arbitration Forum on the 6th of February for 2 domain names:
ibm.ventures
ibm.guru

This was the first URS complaint filled for any New gTLD domain name.

Through the URS Procedure ICANN offers a lower-cost, faster path to relief for rights holders experiencing clear-cut cases of infringement caused by domain name registrations. The URS filling fee at the National Arbitration Forum is $375 for up to 14 domain names. The URS can only lead to suspension of the domain names. The URS will not provide the transfer of the disputed domain name to the trademark holder. If the trademark owner wants to take ownership of and use the disputed domain, it should instead file a UDRP complaint or other legal action.

Both domains were registered by someone from New Jersey that paid $1,239.99 for each domain name on day 3 of the Donuts Early Access Program (EAP).

The EAP instead takes place during the first seven days of a gTLD’s general availability. Interested individuals, organizations, businesses and others can register names on a first-come, first-served, non-restricted basis.

But no one can register a domain name incorporating a trademark if the trademark is registered in the Trademark Clearinghouse AND the trademark holder has activated the Donuts DPML* block.

It seems that IBM was registered at the Trademark Clearinghouse but had not activated the DPML block for the term “IBM”. A DPML block across all Donuts’ gTLDs costs about USD 2,995 for an initial five year term.

Since filling for the URS complaint above, IBM has activated the DPML block. Now, no “IBM” domain name from the Donuts New gTLDs can be registered by anyone else except for IBM.

e.g. A whois search for ibm.singles displays the following message:
“This is not a domain registration. It is a DPML block. Additional information can be found at http://www.donuts.co/dpml.”

Lesson learned…

*Here are a few points about how Donuts’ Domains Protected Marks List (DPML) works:
• Eligible marks must be validated in the TMCH with proof of use
• You can choose to block an exact match or a term containing the exact match
• The block lasts for five years and is renewable
• Blocked terms are inactive (ie they can’t point to a website)
• Anyone with a trademark exactly matching your blocked term can have the block removed for one or more registries at a later date – this includes you, if you decide you need to activate a name