The .sucks domain name extensions will become generally available on 21 June 2015. Until then, trade mark owners are able to pay a premium to ensure their brands do not end up registered in the .sucks space by third parties. The launch of this domain specifically does not change anything in relation to the issues brand owners face in protecting their trade marks online. What it does do, is highlight how continuous vigilance remains important and how the opening of new domains can create new scope for potential cyber squatters.

With the huge proliferation of generic and top level domains now opening up across the online world, it is more crucial than ever that trade mark owners have a strong policy in place that ensures their brands and trade marks are well managed and protected online. A proactive strategy for any business would include:

  1. regularly reviewing new delegated strings for generic top level domains of interest to the business. A list of new generic top level domains launched, or yet to be launched, is available at the Trade Mark Clearinghouse;
  2. ensuring that the business holds registered trade marks in relation to its brands, which in certain circumstances can be enforced directly against third party domains as trade mark infringement or can be used to support a Trade Mark Clearinghouse application (if this is appropriate);   
  3. having in place both trade mark register and online watching services to ensure the business can promptly enforce its rights through the domain name dispute mechanism available or against any infringement.

Vigilance is the key so that if an issue is located, the brand owning business can quickly identify the issue and the most expedient way to deal with it. This could include utilising the various domain name dispute resolution procedures available, or trade mark infringement actions, subject to the nature of the issue identified and its importance to the business.

Background

Generic and top level domain names have now been around for some time. There is already a proliferation of options available including positive domains such as ‘.best’ and ‘.love’, and descriptive domains such as  ‘.wine’, ‘.hotel’ and ‘.store’. This has increased the volume of issues trade mark owners can face in the online world. No trade mark owner can put in place a domain name registration policy which protects against any possibility of third parties seeking to ‘squat’ on domain names containing or referencing their trade marks. The best approach is to put in place a practical strategy to deal with any business critical cybersquatting issues as they arise.

The recent creation of the .sucks generic top level domain, the viral promotion of this domain to the public, has once again brought the issue of protecting trade marks and brands online into the spotlight even though this new domain does not in itself change the landscape in relation to these issues.

The arrival of the .sucks domain

The potential for abuse by cyber squatters with the .sucks domain, administrated by Vox Populi Registry Inc, of Canada (Vox Populi) is particularly obvious because trade mark and brand owners may be willing to pay more to have a domain name which includes their brand and ‘sucks’ in the same name returned to them.

The .sucks domain is currently in the Sunrise period (until 21 June 2015) where only trade mark owners verified in the Trade Mark Clearinghouse can seek .sucks domain name registrations. The Sunrise Pricing for trade mark owners for the .sucks domains is US$2,199 per domain name, per year. This is significantly higher than standard pricing of domain names.  However, this is the price trade mark owners are being invited to pay to stop their trade marks and brands appearing as ‘brandname.sucks’ domain names.

The Internet Corporation for Assigned Names and Numbers (ICANN) has already requested the United States Federal Trade Commission (FTC) and the Canada Office of Consumer Affairs (OCA) investigate the legality of Vox Populi’s operations including in relation to its pricing system. In May 2014, Vox Populi responded to ICANN through its attorneys, disputing any illegality of their conduct. Vox Populi noted that their .sucks domain would promote free speech rights of individuals and small organisations, and that registrations with .sucks domain name will be subject to the ICANN’s usual dispute resolution procedures (which allow trade mark owners to dispute domain names filed on the basis of bad faith, among other requirements). At this stage neither the FTC nor the OCA have responded, although on 13 May 2015, the United States House of Representatives Judiciary Committee held a hearing on “Stakeholder Perspectives on ICANN: The .Sucks Domain and Essential Steps to Guarantee Trust and Accountability in the Internet’s Operation”.

It is yet to be seen whether the .sucks domain will continue to exist and how ICANN will handle similarly problematic new generic top level domains.

Indications are that after 21 June 2015 names in the .sucks domain, excluding those that have been pre-registered by trade mark owners, will become available for around US$250. In the meantime, a number of virtual products are being specifically offered to potential registrants in the .sucks space to maximise the chances of securing an individual .sucks domain. This includes trade mark owners seeking to secure their brandname.sucks defensively, ahead of other potential registrants, without incurring the significant fees involved with obtaining the .sucks name in the Sunrise period.

Summary

Protection of trade marks and brands in the online world will continue to vex trade mark owners. We see this increasing as the number of domains available increases exponentially and online consumer traffic continues to grow.

It has become impossible as a matter of practice for trade mark owners to defensively secure their trade marks against all domain name cyber squatters. Instead, trade mark owners need to ensure they have a clear strategy in place that:

  • monitors for third party use of their trade marks and brands, including online and in domain names
  • creates a system for assessing what impact this use could have on the trade mark and brand, including any reputational impact
  • provides guidance on options to deal with the issue based on its likely impact on the trade mark, brand and business reputation

If a trade mark owner finds their trade mark or brand has been included in a domain name by an adverse party, a number of domain name dispute resolution policies are available under which they can rely on their trade mark ownership rights as a basis to deal with the third party domain name. This applies regardless of whether the domain name is being used as a trade mark, which would generally be a requirement to bring a successful trade mark infringement action.