This gTLD .sucks

Many brand owners are outraged as the ".sucks" generic top-level domain (gTLD) "sunrise period" opened this week after failed attempts to persuade the Internet Corporation for Assigned Names and Numbers (ICANN) to stop the rollout of .sucks domain names. As of Monday, trademark owners who have met certain requirements can register .sucks domain names consisting of their trademarks at premium prices. Beginning June 1, the remaining .sucks domain names will be available to the public at much lower, and in some cases subsidized, prices.

Vox Populi Registry paid over $3 million for the .sucks gTLD. Vox apparently intends to recoup this money by charging trademark owners exorbitant prices to register their brandname.sucks domain names, while at the same time subsidizing non-brand owners' registration and use of .sucks domain names for complaint websites.

In Intellectual Property Constituency's March 27 letter to ICANN pleading to halt the .sucks domain name roll out, it alleged that Vox's "actions in establishing this predatory scheme are complicit in, and 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." ICANN itself stands to gain from the .sucks roll out, since Vox has promised to pay a $1 "registry administration fee" per transaction on its first 900,000 .sucks domains.

Pricing

The sunrise period provides brand owners with a chance to purchase .suck domain names for their registered trademarks before the .sucks domains are available to the general public. The sunrise period for the .sucks gTLD began March 30, and continues through May 29. To take advantage of the sunrise period, brand owners must register their trademarks with the Trademark Clearinghouse. The .sucks registry has recommended an MSRP of $2,499 per year for brand owners to register .sucks domain names during the sunrise period. Presumably, brand owners who purchase their brandname.sucks domain name would ensure that the domain name remains inactive.

Starting June 1, the "general availability" period opens. During this time, the general public can purchase "standard" .sucks domain names for $249 per year and "premium" .sucks domain names for $2,499 per year. The "premium" .sucks domains are determined by Vox at its discretion. Vox has culled the list of "premium" domain names to primarily include trademarks whose owners have previously made efforts to defensively protect their brands from other domain name abuses by registering the brands with the Trademark Clearinghouse. This means that brand owners will be charged a premium to purchase their brandname.sucks domain names.

Also beginning June 1, trademark owners can domain block "standard" .sucks domain names. A domain block prevents others from registering the name but does not enable active use of the website. Domain blocks will be available on a first-come, first-served basis for $199 per year.

Beginning on Sept. 1, Vox will also offer a "consumer advocate subsidized" pricing. This means Vox will subsidize the $249 registration fee for individual consumers (that is, non-brand owners) who want to host a "forum discussion website" hosted on the Everything.sucks platform.

Vox's pricing and subsidy scheme makes .sucks domain names readily available to non-brand owners for little or no cost, while charging brand owners premium prices to register their brandname.sucks domain names.

Recourse

Brand owners facing financial barriers to defensively purchase .sucks domain names should also consider the potential legal hurdles to recovering .sucks domain names that incorporate their registered trademarks.

As with the traditional gTLDs (e.g., .com), a brand owner can take advantage of ICANN's enforcement mechanisms, such as the Uniform Dispute Resolution Policy (UDRP) or Uniform Rapid Suspension (URS) procedure to attempt to recover a .sucks domain name that incorporates the brand owner's trademarks. Under these mechanisms, a brand owner can recover a domain name where (1) the domain name is identical or confusingly similar to a trademark owned by another, (2) the registrant has no rights or legitimate interests with respect of the domain name (e.g., if the domain is used for a parked website that generates click-through advertising revenue), and (3) the domain name has been registered and is being used in bad faith. All three elements must be established.

In the case of .sucks domain names used for criticism or forum discussion websites, brand owners likely will not be able to prove the second element - that the registrant lacks any legitimate use of the .sucks domain name. In many cases, a .sucks criticism or complaint website would be considered fair and noncommercial use of a domain name, and would constitute "protected speech" under the First Amendment. In such cases, a brand owner could not recover the .sucks domain in a UDRP or URS proceeding, leaving brand owners with little recourse.

By subsidizing the registration fee for individual consumers who want to host "forum discussion websites" on the Everything.sucks platform, Vox essentially created a scheme whereby non-brand owners can register brandname.sucks domain names that cannot be recovered by the brand owners. Because such websites are considered "protected speech" under the First Amendment, brand owners may not be able to recover domain names that prominently feature or incorporate their marks.

Recommendations

Because of the low barrier to entry by third parties to register and use .sucks domain names, and the risk that brand owners cannot later retrieve their brandname.sucks domain names due to First Amendment interests in forum discussion websites, brand owners should consider defensively taking action to prevent others from registering and using brandname.sucks domain names. While this registration will not prevent others from registering .sucks domain names featuring creative variations of the brand owner's mark, it would at least allow the brand owner, as the legitimate trademark owner, to have control over its identical mark in .sucks domain names.

Jocelyn M. Belloni and Sharoni S. Finkelstein are associates in K&L Gates LLP's San Francisco office.