In brief: Despite strong criticism of Vox Populi's pricing scheme as predatory and exploitative, brand owners are paying hefty premiums for early registration in the yourbrand.sucks domain string. With sunrise registration closing on 29 May 2015, you should now be taking the necessary steps to ensure your company can secure a registration during the sunrise period, so that .sucks will not suck for your brand. Partner Tim Golder (view CV) and Associate Carissa Apps report.

INTRODUCTION

In 2012 the Internet Corporation for Assigned Names and Numbers (ICANN) launched the gTLD (generic top level domain) program. Our previous Focus: Wild wild Web – securing prime Internet real estate and protecting pre-existing trade marks provides comprehensive background information on the program. Among the 595 new gTLDs that have so far been approved by ICANN and introduced to the Internet is the .sucks gTLD, hosted by Canadian company Vox Populi Registry Ltd. The .sucks gTLD is one that will impact brand owners universally, and the rapid rate at which sunrise registration numbers are rising  (notwithstanding exorbitant fees) demonstrates the desire of brand owners to register their names in the space. 

Registrations in the .sucks domain string are now available to brand owners at a premium price of $2499. From 1 July 2015 the .sucks string will be open for general availability, which will see standard registrations available at a much more reasonable price point, although it is unlikely that brand-related registrations will drop in price at that stage. The real danger arises from 1 September 2015 when individuals will be able to register any name within the .sucks string for as little as $9.95.

.SUCKS

According to the Vox Populi website, .sucks 'is designed to help consumers find their voices and allow companies to find the value in criticism'. The company takes the view that each .sucks domain has 'the potential to become an essential part of every organisation’s customer relationship management program'.

Sunrise registrations in the .sucks string are currently available to trade mark owners with registrations in the Trade Marks Clearinghouse (TMCH) and will cost $2499. At more than 15 times higher than the standard sunrise registration fee, the consensus seems to be that the .sucks sunrise registration fees suck (at least for brand owners). However, the hefty fees have not deterred brand owners from securing their space, with iphone.sucks, converse.sucks, gumtree.sucks siri.sucks, lonelyplanet.sucks and xbox.sucks among the sunrise registrations highlighted on the registry's website. The sunrise period closes on 29 May 2015.

As of 1 June 2015, the .sucks string will be open for general availability. While most brand-related names and other 'premium names' pre-selected by Vox Populli will still be charged at a premium, 'standard registrations' will be available at the much more reasonable price of $249. From 1 September 2015 the ‘consumer advocate subsidised’ program will allow individuals to register any name (including those previously available at $2499) at a bargain price of $9.95. All .sucks domains registered under the subsidy program will be provided with a free, hosted, consumer forum.

Immediately before its launch, ICANN's Intellectual Property Constituency (IPC) asked ICANN to halt the rollout of .sucks in a formal letter. It claimed that Vox Populi's pricing scheme is 'predatory, exploitative and coercive'. The IPC claims that, by placing a premium on brands that have been submitted to the TMCH, the scheme will discourage trademark holders from using a key rights protection mechanism (ie the TMCH), which will 'encourage bad-faith registrations by third parties at the second level of the .sucks gTLD, and thus drastically increase the likelihood of trademark infringement, all for commercial gain'.

In response, ICANN has asked the United States Federal Trade Commission and Canada's Office of Consumer Affairs to consider assessing and determining whether Vox Populi is violating any laws or regulations enforced by their respective offices. If it is, then ICANN will take the necessary steps to ensure that the registry is appropriately regulated.

In the meantime, rights holders may be able to pursue third party infringers under the Uniform Dispute Resolution Policy (UDRP) or the Uniform Rapid Suspension (URS). The URS applies only to the new gTLDs and is designed to complement the existing UDRP. While it is designed to be fast and cost efficient, suspension will only be granted in cases of blatant misuse of trade marks. It has been established that the top level domain is irrelevant in determining identity or confusing similarity, but it is uncertain how (and if at all) the .sucks domain will be considered in determining whether the domain name is being used in bad faith. It seems unlikely that use in relation to a consumer discussion forum would be considered use in bad faith.

SUMMARY AND RECOMMENDATIONS

Despite concerns over the hefty registration fees and the intention behind the regime, brand owners are obviously seeing the need to register in the .sucks string. It is unclear whether the intention of registrants is to use their .sucks registrations as a marketing tool or as being wholly defensive, however one thing is for sure – you do not want someone else being in control of yourbrand.sucks.

In order to ensure that your company has control over how yourbrand.sucks domain is used, you must act quick. Sunrise registration closes on 29 May 2015, so if you have not already done so, take steps now to  enter your company's registered trade mark(s) in the TMCH so that you can secure your .sucks domain name during the sunrise registration period. If you do not, the potential consequences for your brand may far outweigh the exorbitant registration fees.