The registration policies and pricing for .sucks domain names paint trademark owners into a corner. This alert explains the defensive registration options for mark owners, although there are no “good” options. The new gTLD .sucks opens to the public at 7:01 p.m. EST on May 31. Sunrise registration is open now through 7:01 p.m. EST on May 28 for mark owners that have recorded marks with the Trademark Clearinghouse (TMCH).
Although we focus on mark owners, public figures should also be wary of the risks posed by .sucks. The difference between the two groups is that most public figures do not own trademark registrations for their names. Thus, most public figures must wait for general registration to open on May 31 to defensively register .sucks domain names.
Risks Associated with .sucks
The stated mission for .sucks is to foster debate, encourage customer-led advocacy and freedom of speech, and provide “an easy-to-locate central town square” for criticism. The risk for trademark owners is that .sucks becomes a centralized, popular, and unregulated outlet for customer complaints and even slanderous or hate-fueled content aimed at their brands, employees, products and services. Picture www.YourBrand.sucks as a Yelp! page with no filter, no moderation, no balance of positive reviews, no corporate responses, and an easy to locate web address.
The risk associated with .sucks is exacerbated by the reality that it will be very difficult to retrieve a .sucks domain name from a third-party registrant. Traditional domain name enforcement options are not likely to be successful because the .sucks registrant can assert a free speech interest in its domain name, i.e., that there is no trademark infringement occurring at the site, only consumer comment and criticism in the form of protected speech. Once registered by a third party, a .sucks domain may be out of the mark owner’s reach. Accordingly, there is potentially grave risk in waiting to see if .sucks is popular with consumers before securing .sucks domains.
Sunrise Registration and the TMCH
During the ongoing Sunrise registration period, trademark owners that have recorded their marks with the TMCH may register their marks as .sucks domain names. Generally, only trademarks registered with a national trademark office, such as the U.S. Patent and Trademark Office (USPTO), are eligible for registration with the TMCH. The significant benefit of TMCH recordation is eligibility to apply to register the recorded mark as a domain name during the Sunrise registration period for any new gTLD, including .sucks. Trademark owners may not participate in the Sunrise registration period for .sucks without first recording their trademark(s) with the TMCH. In our experience, it takes up to three weeks for the TMCH to complete the recordal process. Accordingly, for companies planning on participating in the .sucks Sunrise period, we recommend filing TMCH recordal(s) by no later than April 30.
A TMCH recordal allows a mark owner to apply to register the exact mark. For example, a recordal for the mark Your Brand allows Sunrise registration of only www.YourBrand.sucks, not www.Your-Brand.sucks or www.YourBrandReally.sucks. Mark owners must wait for general registration to register such variations. If two or more mark owners apply for an identical name during the Sunrise period, an auction process will determine the registrant.
The price of a .sucks registration during the Sunrise registration period is between $1,999 and $2,499 because such registrations are considered “premium” names by the Registry Operator. The price drops to $249 for non-premium, or “standard,” domain names during the general registration period beginning May 31. A slightly cheaper option for standard domain names is a .sucks domain “block” at $199, which will prevent registration of the blocked domain, but not allow use of the website at the domain. Blocks are also available starting May 31. Premium names are not eligible for blocks so mark owners may not be able to rely on this mechanism. With regard to holding out for standard registration or blocks, mark owners should also not underestimate the ability of cybersquatters to use bots or other tactics to beat mark owners to registration. Due to complaints from brand owners regarding this pricing structure, ICANN has referred the matter to the Federal Trade Commission. However, no immediate response is anticipated and we do not anticipate a resolution of this problem prior to the expiration of the Sunrise period.
Premium domain names will be individually priced during general registration. General registration pricing for TMCH registered marks may not be lower than Sunrise pricing. In addition, although Registry pricing policies may change, the current .sucks business plan calls for any domain name registered during the Sunrise period to incur the same yearly fee at renewal. Thus, a ten year registration period for a Sunrise-registered .sucks domain could cost $25,000. Annual renewal fees for standard and premium domains registered after the Sunrise period (during general registration) are $249.
There is a fourth registration phase known as “Consumer Advocate” registration. These registrations are characterized by the Registry as “subsidized” and will be available to non-corporate registrants in fall 2015, at a price below $10. Consumer Advocate registrations are not an option for mark owners. Domains registered by Consumer Advocates will be automatically populated with a discussion forum on the subject of the domain.
Options and Considerations
The only means to guarantee control over a .sucks domain name is through Sunrise registration. Companies may choose instead to wait for general registration and hope they are first in line for their desired .sucks domains, and that the domains have not been classified as “premium.” Or companies may choose not to protect certain marks. The right registration strategy for your company likely involves some mix of these options, particularly if your company owns a large trademark portfolio.
Your company’s .sucks registration strategy should consider your budget, the fame of your mark(s) (which may indicate the likelihood of third-party registration), and the potential damage to your brand as the result of third-party operation of www.YourBrand.sucks and other .sucks domains. Also consider the likelihood of registration of .sucks domains by competitors or disgruntled or former employees. Bear in mind that once a .sucks domain is registered by a third party, it may be difficult or even impossible for your company to retrieve it.
Please contact Anne Aikman-Scalese or Nate Edwards with any questions regarding the new gTLD .sucks or to discuss your company’s .sucks registration strategy.