‘Registration Blocks’ Provide Protection

When the ICM Registry initially launched .XXX last year, the notion of a ‘registration block’ was a fairly novel idea. Essentially, the ICM Registry allowed companies who were not part of the global adult entertainment industry” to seek permanent removal of names matching their trademarks from the general pool of names available for registration for a low-cost fee. Many saw this move by the ICM Registry as a genuine attempt to protect the rights of brand owners while others saw it as yet another mechanism for generating revenue from rights owners under the guise of a   “Sunrise Period.”

While most brand owners were probably not too happy to hear that the ICM Registry had also submitted New gTLD Applications for .adult .porn and .sex they will likely be relieved to know that if awarded to ICM Registry names that were blocked for .XXX will  be automatically blocked in .adult .porn and .sex too.

Donuts Inc. who applied for 307 new gTLDs has also devised a similar type of ‘registration block’ in which brand owners may request the block of a string containing a trademark which has been validated against the Trademark Clearinghouse. Note that exact matches can be protected as well as ANY string containing a validated trademark.

This means that if MarkMonitor had successfully submitted “MarkMonitor” to the Trademark Clearinghouse then we could block strings such as MarkMonitorProducts MarkMonitorServices or MarkMonitorClients across all 307 registries (assuming that Donuts is awarded all 307.) The downside however is that there will be fees associated with each protected string. According to Donuts’ New gTLD Applications the costs for  these ‘registration blocks’ is “expected to be significantly less than the cost of actually registering a name.” Of course we’ll see in time what the actual costs are.

While both the ICM Registry and Donuts Inc. should be lauded for their efforts there are still hundreds of other new gTLD Applicants who have not stated their intent to employ these kinds of ‘registration blocks’.

Regardless of whether companies choose to block registrations or defensively register new gTLDs there will be additional costs associated with both approaches. And given the dramatic increase in the namespace and all of the potential for abuse trying to protect brands solely through defensive registrations or ‘registration blocks’ simply won’t work in the new landscape.

Certainly companies will want to leverage ‘registration blocks’ and for some the practice of defensive registrations will still make sense. However the need to actively monitor domain name abuse (and to take action where appropriate) will become increasingly more important as each new gTLD Registry is launched.”