Who: ICANN, Vox Populi
When: 30 March 2015
Law as stated at: 1 April 2014
As many brand owners will be aware, the ICANN have approved several hundred new gTLDs, many of which have created new opportunities for websites and brand marketing. However, the approval of the controversial new “.sucks” gTLD, which is set to launch before year end, means that brand owners need to decide between taking defensive measures and purchasing their own brand as a domain name, or run the risk that their brand will be purchased and used in a manner that may harm the brand by an unscrupulous third party.
Sunrise registration cost shock
The .sucks domain launched for sunrise registration on 30 March 2015. This gives qualified trade mark owners, registered with the Trademark Clearinghouse, first crack at registering their protected brands. However, the extraordinary costs of a .sucks domain during the sunrise period – $2,499, with renewal expected to be the same each subsequent year – means that it is not surprising many brand owners feel extorted.
After 1 June 2015, registration will be open to the general public. While exact prices remain unclear, there will be a “standard” price of $249 per year, as well as a higher price for those domains deemed to be “premium” at the discretion of Vox Populi, the registry company behind the domain. As no one knows what will constitute a premium registration, or what it will cost, waiting to register during the general availability period may not provide any savings. Vox Populi has also announced a proposed scheme whereby, later this year, consumers will be able to buy a .sucks domain for as little as $10 per year; with such domains being redirected to a discussion forum on the everything.sucks domain.
What brand owners can do to protect themselves
As with traditional gTLDs, if a third party attempts to register a .sucks domain name incorporating a registered trade mark, this can be challenged using ICANN’s rights protection mechanisms. However, brand owners should not expect such registrations to necessarily infringe their marks; a UDRP or URS complaint will only be successful if the third party lacks a legitimate use as it has been previously held that consumers are permitted to use a brand name or trade mark for the purpose of good faith criticism or complaints. This can make it difficult for the trade mark owner to recover the site.
At the very least brand owners should make sure their trade marks are properly recorded in the Trademark Clearinghouse, a requirement for sunrise registrations, to ensure they are notified of any attempts to register an exact match for the brand owners mark. Trade mark owners will then have until 29 May 2015 to decide whether to pay the $2,499 registration fee in the sunrise period, or take a chance and seek a blocking registration after 1 June 2015. However, even brand owners who take the obvious steps to protect themselves and register their own trade mark as a domain must realise that whilst any registration would allow the brand owner control over its identical mark, it will not necessarily prevent others from registering creative variations of the mark which may be equally as damaging.
Why this matters:
The launching of the .sucks domain presents another challenge in reputation management for all brand owners, requiring them to carefully assess their portfolio to determine whether defensive registration is a worthwhile investment, particularly in light of the (lack of) protection on offer.