General Availability Registration Period for Brand Owners Began on June 21
The Internet Corporation for Assigned Names and Numbers (ICANN) has the responsibility for the administration of domain names. In 2011, ICANN developed a program for the expansion of new generic top-level domain names (new gTLDs) beyond the standard .com and launched the first of the new gTLD registries in 2013.
The .SUCKS registry, owned and operated by Vox Populi, is one of the most controversial of the new gTLDs. The introduction of the .SUCKS gTLD has put pressure on brand owners to develop a strategy and decide whether, when, and how to protect their trademarks. That said, the .SUCKS Registry stands firm in its belief that .SUCKS was "designed to help consumers find their voices and allow companies to find the value in criticism." They further stated that they did not envision that the .SUCKS domains would be "used solely as a defensive registration to keep trolls from owning the website."
With the recent launch of the new .SUCKS gTLD, brand owners were faced with the decision of whether to pay the high price, which most have argued to be brand extortion, to register their trademarks as .SUCKS domains or take the chance that a third party, such as a cybersquatter, competitor, or dissatisfied consumer, will take control and register the brand owners' trademarks as .SUCKS domains. There are two periods during which .SUCKS domains, as well as other new gTLDs, may be registered, the "Sunrise Registration" period and the "General Availability" period.
Brand owners that registered their trademarks with the Trademark Clearinghouse had the opportunity to register their trademarks as .SUCKS domains during the "Sunrise Registration" period (early registration) before the .SUCKS domains were offered to the public. The cost to register during the "Sunrise Registration" period was $2499 per domain for one year.
The .SUCKS "Sunrise Registration" period, which was scheduled to end on June 1, 2015, was extended to June 19, 2015. Vox Populi extended the deadline to allow brand owners additional time to make a timely and informed decision about whether to register their marks.
The "General Availability" period (open to the public) started on June 21, 2015. There are four types of .SUCKS domain registrations available:
- Standard registration costs $249 per domain and is available on a first-come, first-served basis. The .SUCKS domain must be registered for active use. However, the cost is higher to register a Registry Premium or Market Premium domain (see below).
- The cost to place a .SUCKS domain on reserve/block (nonactive domain) is $199 per domain and is available on a first-come, first-served basis. Blocks are NOT available on Registry Premium or Market Premium domains.
- The .SUCKS Registry has created a list of Market Premium .SUCKS names. The cost to register a Premium name is $2499 per domain.
- The .SUCKS Registry created a list of Registry Premium names that the Registry believes have exceptional value. Pricing for Registry Premium names depends on the individual name.
The list of Market Premium and Registry Premium names is available to Registrants through their Registry Extensible Provisioning Protocol interface. It is important that brand owners take the time to weigh their options and consider the pros and cons of registering their trademarks as .SUCKS domains. Some factors to take into consideration when developing a strategy are:
- The high costs of registration if the brand owner’s trademark is on the Market Premium or Registry Premium lists;
- Whether it is financially practical to register every trademark in the portfolio;
- Whether it is financially practical to register a few key trademarks in the portfolio, namely, the house marks;
- The fact that many gTLDs, such as .com, may be registered for as little as $10 per year;
- The risk that third parties may register brand owners' .SUCKS domains, which may then be used to criticize and attack;
- The realization that even if a brand owner registers <Trademark.Sucks>, there are still endless variations that third parties may register. For example, <Trademarksucks.Sucks>;
- The possibility that ICANN’s Uniform Dispute Resolution Policy or the Uniform Rapid Suspension procedures may not be successful in stopping third-party registrations, because of the noncommercial purpose of the .SUCKS domains, as well as the Registrant’s First Amendment rights. However, a brand owner may be successful against .SUCKS domains that are parked or non-resolving.
In spite of the high cost of registration, many brand owners, sports teams, and celebrities have already developed a strategy and registered their trademarks as .SUCKS domains, to prevent malicious registration by third parties. Over 3000 .SUCKS domains were registered during the "Sunrise Registration" period, and over 2000 .SUCKS domains were registered within the first few hours of the "General Availability" period.
Taking into account that the "General Availability" period opened on June 21, 2015, and numerous domains have already been registered, brand owners that have not yet made a decision with regard to registration should do so without delay.
Aside from the new .SUCKS gTLD, it is essential that brand owners have a strategy in place for all of the new gTLDs that continue to be rolled out. For those brand owners that have not yet developed a strategy, it may be advantageous to work with counsel knowledgeable in the domain name landscape to help determine whether, when, and how to protect their trademarks.