Discussion about how something "sucks" is no longer reserved for middle school lunchrooms. Soon the Internet will include a new generic top-level domain ("gTLD") for .SUCKS. The goal of this new gTLD—according to its operator, Vox Populi Registry—is to foster a town square for consumers to voice opinions and criticism.1 On the other hand, many companies are obviously concerned that .SUCKS will adversely impact their brands and open a new avenue for cyber-squatters and other bad actors.
Available Defensive Measures
Companies with trademarks recorded on the Trademark Clearinghouse ("TMCH") database are being offered a "Sunrise Period" from March 30 to May 29, 2015, to defensively pre-register .SUCKS domain names that include their brands. After the Sunrise Period, companies with TMCH registrations are provided a 90-day “Claims Period” during which time they should receive notice whenever someone attempts to register a .SUCKS domain name that matches their trademark. Once the Claims Period concludes, trademark owners must employ other watch mechanisms.
If you are interested in defensive registrations during the Sunrise Period, then the two most immediate concerns are time and cost. First, to join the TMCH database, your trademark must undergo a verification process that can take 25 days (up to 15 days for the trademark record and up to 10 days for proof of use).2 Second, defensive registrations for .SUCKS are priced at $2,499 per registration. And this is not just a one-time fee — the registration must be renewed annually at the same price. By contrast, starting in September 2015, consumers will be offered .SUCKS domain names for only $9.95 through a consumer advocacy forum platform “everything.sucks.”
Think Before You Buy
For some companies, $2,499 may seem like a small price to protect key, valuable trademarks. Yet with the explosion of hundreds of new gTLDs, including other gripe sites (e.g., .GRIPE, .WTF, .BOO and .EXPOSED), vice sites (e.g., .SEXY and .POKER) and descriptive terms (e.g., .LEGAL, .LAWYER, .BANK and .LOANS), companies must carefully consider their registration strategy.3 As .SUCKS illustrates, an aggressive domain name blocking and registration strategy can be an expensive proposition. Companies should develop a comprehensive plan that takes into account their trademark portfolio, current and future business goals, geographical considerations, risk tolerance and the potentially high costs for registration and renewal. They should also consider setting aside a contingency fund for legal expenses related to enforcing their trademark rights should a bad actor obtain one of the innumerable gTLDs that is worth fighting over in the name of brand protection.
1. See Vox Populi Registry, Ltd., https://www.nic.sucks/ (last visited March 30, 2015).
2. See Trademark Clearinghouse, http://www.trademark-clearinghouse.com/help/faq/how-long-will-verification-process-take (last visited March 30, 2015).
3. A list of new gTLDs delegated since October 2013 can be found on ICANN’s website at http://newgtlds.icann.org/en/program-status/delegated-strings.
