.sucks for Trademark Owners …
April 14, 2015
By Catherine Lovrics, Sharyn Costin, and Tamara Céline Winegust
The .sucks domain has launched, and is currently in the sunrise period for trademark owners. The domain will become available for public registration on June 1, 2015.
The administrator of the .sucks domain, Vox Populi, Ltd., has marketed the new generic top level domain (gTLD) as a “central town square … designed to help consumers find their voices and allow companies to find the value in criticism”. The domain appears intended to facilitate criticism through consumer advocacy, but also cause-related activism, with the administrator suggesting anti-cancer or anti-bullying applications for the domain, such as “cancer.sucks” or “bullying.sucks”. Consumer advocate groups and the like have celebrated .sucks as providing a forum for consumer protection and protest.
Conversely, the .sucks domain has been criticized by many trademark owners as being predatory and premised on a business model that banks on trademark owners seeking such protection. General Counsel to the Internet Corporation of Names and Numbers (ICANN) has sent a letter to the US Federal Trade Commission and Canada’s Office of Consumer Affairs citing concerns raised by ICANN’s Intellectual Property Constituency that the business practices of the .sucks registry operator are “illicit”, and also “predatory, exploitative, and coercive”, and requesting that these government bodies investigate whether any laws or regulations are being violated.
The concern arises largely over registration and maintenance costs aimed at trademark owners. The cost to trademark owners who have registered their marks with the Trademarks Clearing House and are eligible to register a domain name during “sunrise period” (March 30, 2015–May 30, 2015) will be around $2500 per year. This is high, considering the sunrise costs for most new gTLDs is usually between $200 and $400 per year. Once the sunrise period ends, the cost of registering a .sucks domain will drastically change, and the general cost of registration will fall to around $250 per year, with higher costs for “premium” or “sunrise premium” names at around $2500 per year. These costs stand in stark contrast to the proposed $10 per year cost for eligible “forum discussion websites” (e.g. criticism sites), beginning in September 2015.
Trademark owners have a few options available to try to prevent their mark from becoming a .sucks domain name:
(1) Trademark owners who have registered their trademarks with the Clearing House could seek to register an associated .sucks domain name during the sunrise period. Given the high associated costs, protection would likely only be sought for “key” marks. While a trademark owner could wait until the general registration period when the cost would be lower, delaying registration could result in the domain name being “scooped” by a third party, since general registration is open on a first-come first-serve basis. Further, if the mark is registered with the Clearing House, it may be placed on the “premium sunrise” list, in which case, the costs associated with registration/maintenance would remain the same.
(2) Once the sunrise period ends, trademark owners can seek a “block” registration. Such registrations render the domain “inactive” on the condition is it not used by the registrant. This effectively prevents others from registering the domain name. The costs associated with blocking registrations are not as high (about $200 per year for up to 10 years). The blocking service, however, is not available for premium or sunrise premium names.
(3) Trademark owners can set up watch services to notify them if and when .sucks domain names containing their marks are registered, and then can consider what action, if any, to take.
Like with any new gTLD, trademark owners will need to be strategic about their protection and enforcement approach on the .sucks domain. Practically speaking, it will be impossible to register all possible variations of a mark to prevent .sucks websites of potential concern from popping up. Identifying and focusing on only “key” trademarks can help brand owns control the costs associated with proactively or defensively registering domain names. Brand owners can also consider setting up watch services for new .sucks (and other top-level domain) registrations. When a brand owner discovers a .sucks domain name is being used by a third party, there are several options to consider, from doing nothing and monitoring, to mandatory arbitration (the Uniform Rapid Suspension (URS) or Uniform Dispute Resolution Procedure (UDRP)), to litigation.
Legally, .sucks is inherently challenging since the domain may be argued to suggest criticism of a brand, and therefore no affiliation with the trademark owner. On the other hand, leveraging brand notoriety for commercial purposes, even through criticism, for example, to make ad revenue or in association with a commercialized website, may be argued to misappropriate the goodwill associated with a brand, and depreciate and dilute its value. Likewise, offers to sell .sucks domains could be considered evidence of bad faith – for example, a registrant may register a .sucks domain to “extort” money from the trademark owner to protect its brand’s reputation. The first cases involving .sucks domain names will be closely watched for outcome, as they may set the trend in how .sucks disputes are resolved.
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