March 30, 2015, is the opening day of the “sunrise” period for registration of domain names in the .SUCKS top-level domain (TLD). Unlike other recently created TLDs, which are typically oriented toward either particular companies (like .GOOGLE) or generic areas of interest (like .FOOD), the .SUCKS TLD domain names are designed for use by websites oriented to gripes and criticism. Trademark owners may be tempted to pre-emptively register their own valuable marks as domain names in order to block critics from doing so. However, that course of action is likely to be expensive — and fail to solve the problem.
During the two-month sunrise period, the owner of a trademark already registered in the Internet Corporation for Assigned Names and Numbers’ (ICANN) Trademark Clearinghouse (TMCH) will have the exclusive right to register that exact mark as a second-level domain name, thereby blocking critics from doing so. So, for example, if Transnational Airlines has already recorded its U.S. registration of TRANSNATIONAL in the TMCH, it could register “transnational.sucks” during the sunrise period.
There is nothing unusual about this “sunrise” procedure. What is unusual, however, is the price. The registry in charge of this TLD, Vox Populi has established a “suggested retail price” of $2,499 per year for domain names registered during the sunrise period.
After the sunrise period, any name will be available for registration by anyone. The “standard” price will be $249 per year. However, Vox Populi is creating a list of “Premium Names," which is expected to include the registered trademarks of established companies. The price for registration of a .SUCKS domain name on the list of Premium Names — even after the sunrise period — will be $2,499 per year. The list of Premium Names has not yet been released, but Vox Populi says it will be distributed to its registrars by March 30.
After the sunrise period, Vox Populi registrars will also offer a “domain block” service, which will allow parties to wall off a name from being registered by anyone else. That will cost $199 per year. However, Premium Names will not be eligible for a domain block.
The result of all this is that any company whose trademark is a Premium Name will have to pay nearly $25,000 over 10 years to prevent the mark from being registered by an interloper or critic seeking to establish a “gripe site” devoted to products or services sold under that trademark. This high price tag likely explains why former Sen. Jay Rockefeller, in a letter to ICANN, denounced the .SUCKS TLD as “little more than a predatory shakedown scheme.” On the other hand, Vox Populi claims that its mission is “to help consumers find their voices and allow companies to find the value in criticism.”
Regardless of its morality, trademark owners will not likely find investment in a pre-emptive .SUCKS domain name to be a worthwhile investment. Even if Transnational Airlines were to buy “transnational.sucks”, an interloper could buy a similar name like “transnationalreally.sucks.” Or the interloper could continue to use the much cheaper .com TLD and buy “transnationalsucks.com.”
Importantly, the $2,499 post-sunrise price of a Premium Name URL mark will apply to all purchasers — not just the trademark owner. It is questionable whether any person or entity wanting to establish a Transnational Airlines gripe site will want to spend that much for “transnational.sucks.” if “transnationalsucks.com” is available for a fraction of the cost.
Trademark owners should not expect that either courts or panelists deciding cases under the ICANN Uniform Dispute Resolution Policy (UDRP) will find that registration of their own mark in the .SUCKS TLD will violate their rights. Prior case law almost uniformly holds that trademark owners cannot prohibit use of domain names that clearly evince an intention to be a source for criticism, such as “generalmotorssucks.com” or “ihatemicrosoft.com.”
Therefore, some trademark owners may want to invest in this expensive insurance during the sunrise period. If so, they should make sure that the marks are registered in the TMCH before March 30. The most cost-effective route to do so is through their regular domain-name provider. For more information on the TMCH, please see our March 25, 2013, Legal News Alert.
New York, New York
David A. Copland