As part of the New Generic Top-Level Domain (gTLD) program, the Internet Corporation of Names and Numbers (ICANN) has now delegated nearly 550 new gTLDs. One of the latest additions is < .sucks>. Vox Populi, operator of the < .sucks>. registry, marketed the new gTLD as a forum “designed to help consumers find their voices and allow companies to find the value in criticism”.
The first phrase of the < .sucks>, the Sunrise period, is now open and will remain open until May 29, 2015. During this period trademark owners who have registered their trademarks with the Trademark Clearinghouse (TMCH)* may register a < .sucks> domain incorporating their trademarks. The General Availability period will begin on June 1, 2015.
Aside from the name itself, much of the controversy of the < .sucks> new gTLD surrounds the fees levied by Vox Populi. A registration obtained at the Sunrise period comes with a hefty price tag of US$2,499 per year – an amount significantly higher than the fees charged for registration of the other new gTLDs. Many brand owners have been very concerned about this cost as they may want to protect more than one mark or variations of marks on the gTLD and the cost to do so will be significant. The cost will also not become lower over time as renewals of Sunrise registrations will be at the same fee. ICANN, supported by the Intellectual Property Constituency has asked both the Federal Trade Commission in the US and Industry Canada (where Vox Populi is located) to investigate and take action against these high fees. It does not appear likely that anything will come of such request before the Sunrise Period expires so brand owners must consider the options open to them to protect their brand on this new gTLD.
Trademark owners seeking to protect their marks from undesirable use and/or registration by third parties have the following options available to them:
- Trademark owners who have serious concerns about a < .sucks> registration may consider obtaining a < .sucks> registration during Sunrise period, at the annual cost of US$2,499. Note that Sunrise registration is only available to trademark owners who have already registered their marks with the TMCH. Trademark owners who have not otherwise registered their trademarks with the TMCH will need to do so prior to being able to obtain a . < .sucks> domain name (or any other new gTLDs) during the Sunrise period. BLG is registered to take registrations for the TMCH and can assist brand owners through the entire process.
- Trademark owners may also consider obtaining a < .sucks> registration during the General Availability phrase, at the annual cost of US$249. Registration is on a first-come-first-serve basis, assuming the name is not already registered during the Sunrise period. Pre-registration with the TMCH is not required. Vox Populi is also offering subsidies, that will effectively make the registration of a < .sucks> domain free, for consumer advocates. This may increase the number of registrations on this gTLD and may make it harder for brand owners to obtain the domain registrations they are seeking.
- Trademark owners may also consider seeking a blocking registration during the General Availability period, at the annual cost of US$199. Such registration is a defensive registration that will allow trademark owners to reserve a domain name, preventing others from registering the domain. The blocked domain name cannot be used by the domain name owner. Pre-registration with the TMCH is not required. Blocking registrations may later be converted to regular registrations. Blocking registration can be renewed annually or up to 10 years at a time.
- Trademark owners may also choose not to obtain any < .sucks> registrations and only take action if and when a < .sucks> domain name incorporating their brand is registered by a third party. Trademark owners should consider registering their trademarks in the TMCH and subscribing to a domain name watch service to ensure they are alerted < .sucks> domain name registrations or domain name registrations under any of the gTLDs.
As with all brand protection strategy and the Internet trademark owners need to weigh the costs of registration against the benefits and consider other ways to deal with situations that may arise where consumer advocates or others choose to register a < .sucks> domain incorporating their brand. A proactive approach that combines registration in the TMCH, focusing on what key brands to protect on what top level domains and managing the overall Internet presence of a brand are all ways that trademark owners may be proactive with brand protection on the Internet.