To All Brand Owners: The arrival of a new generic top-level domain (gTLD) will require you to once again evaluate your brand strategies and trademark portfolios, particularly as they relate to the Internet. The Internet Corporation for Assigned Names and Numbers (ICANN) has approved several hundred new gTLDs, but the one that may be of most concern to brand owners is the new .sucks gTLD, which is set to launch this year.
The .sucks gTLD, operated by Vox Populi Registry, Ltd. (Vox Populi), is positioning the new gTLD as a platform for conversation. Indeed, its website declares that the .sucks domain is “designed to help consumers find their voices and allow companies to find the value in criticism.” However, critics of the new domain are concerned that the domain has little or no public interest value and is simply a predatory shakedown scheme aimed at getting businesses to spend a lot of money on defensive registrations.
Whatever your view, the time to make a decision about whether you want to protect your valuable brands from winding up on the left side of the .sucks domain, potentially under someone else’s control, is NOW.
Companies that decide to protect their marks may suffer sticker shock when they see the price tag that comes with the registration of the new domains during the Sunrise period. The Sunrise period, which begins on March 30, 2015, is designed to give owners of brands registered with the Trademark Clearinghouse the first crack at registering their protected brands. The cost to register one brand during the Sunrise period is $2,499, with renewal expected to be the same each subsequent year. For companies with multiple brands, those fees will add up quickly.
In contrast, Vox Populi has published a suggested retail pricing structure on its website of $249/mark once the domains become generally available on June 1, 2015, unless Vox Populi has labeled the domain “premium” at their discretion. At this point, no one knows what will constitute a “premium” registration or what it will cost, so waiting to register during the general availability period may not provide any savings. Vox Populi has also announced a proposed scheme whereby consumers will be able to buy a .sucks domain for $10/year via a “consumer advocate subsidized” pricing tier. Consumers who get a domain at that price will have to redirect it to a discussion forum that will live on the everything.sucks domain.
How Should Brand Owners Respond?
Companies should reevaluate their brand strategies to ensure that their valuable intellectual property rights are properly protected in this new arena. Not surprising, the best strategy is often rooted in basic trademark common sense:
- Identify those marks that you may not want to end up on the left side of a .sucks domain;
- Set a budget that will help you accomplish your objectives, but that is realistic to meet your needs—for example, registering every possible variation of your trademarks as a .sucks domain is probably neither cost-effective nor a viable option for most companies; and
- Obtain specialized legal advice from your trademark practitioner to ensure that your rights are properly protected. This is particularly important for the .sucks domain, as brand owners should not expect that either the courts or arbitrators deciding cases under ICANN’s Uniform Dispute Resolution Proceeding (UDRP) or Uniform Rapid Suspension System (URS) will find a .sucks domain to infringe a brand owner’s mark. There is plenty of prior case law that prohibits trademark owners from complaining about domain names that clearly evince an intention to be a source for criticism.
As with anything new on the Internet, the launching of the .sucks domain presents a dilemma for all brand owners and will require brand owners to reevaluate their portfolios to determine whether defensive registrations are worth the investment.
Important dates for .sucks Domain Name Registration
|SUNRISE PERIODMarch 30, 2015 – May 29, 2015||The pre-launch opportunity for trademark holders to submit Registration Requests for .sucks names corresponding to Trademark Clearinghouse (TMCH) entries.|
|TMCH SUNRISE CONTENTION RESOLUTION PERIOD15 DAYS||The period during which applied-for names during Sunrise are allocated and multiple requests for such names are resolved.|
|GENERAL AVAILABILITYJune 1, 2015||Following the opening of general registrations, registrants may apply on a first-come, first-served basis to register .sucks names.|
|PREMIUM NAMESJune 1, 2015||After the close of the TMCH Sunrise, the Registry may allocate Premium Names, designated as Registry Reserved, from time to time in its discretion via (i) request for proposal; (ii) auction; and/or (iii) other reasonable mechanisms consistent with relevant ICANN contracts and consensus policies.|