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A sucking sound on domain names: .SUCKS is open for registration

Trademark owners should be aware of the .SUCKS registry and factor it into their trademark protection strategy

The .SUCKS registry is perhaps the most controversial of the new generic top level domains (gTLDs), which the Internet Corporation for Assigned Names and Numbers (ICANN) has continued to roll out. Trademark owners should be aware of the .SUCKS registry and factor it into their trademark protection strategy. Yet the first “sucking” noise brand owners will hear will be the debit to their bank accounts for the steep price of registration during the Sunrise Period (which is for trademarks registered in the ICANN Trademark Clearinghouse).

The registry’s pricing has been attacked as predatory, as Sunrise Registrations are priced at $2499. On April 11, 2015, ICANN took the unusual move of asking the U.S. Federal Trade Commission (FTC) and its Canadian counterpart, the Office of Consumer Affairs (OCA) to investigate the legality of the pricing. On May 12, 2015, a Congressional Committee held a hearing to review the issues and the bidding—although neither ICANN nor the .SUCKS registry testified at the hearing.

The problem is that many trademark owners view the .SUCKS pricing as a blackmail price being demanded as protection money for one’s brand, to avoid the brand’s being usurped by disgruntled folks (or even competitors). The .SUCKS registry is owned by Vox Populi (Latin for “Voice of the People”), which intends that it be used as a “central town square” with consumer orators on myriad soap boxes. As the registry’s website states, “dotSucks is designed to help consumers find their voices and allow companies to find the value in criticism. Each dotSucks domain has the potential to become an essential part of every organization’s customer relationship management program.”

The price for a “Sunrise Period” registration is $2499 per domain name/trademark (for one year). The Sunrise Period ends on May 29, 2015. Consumers will be able to obtain subsidized “consumer advocate” registrations for $9.95 each when the general availability registration period opens on June 1. At that time, “blocking” registrations will also be available for $199, and “standard” registrations for $249. A blocking registration cannot be used for a real website, but a block will prevent someone else from registering the same .SUCKS name. A “regular” registration can be used for a .SUCKS website—or not used at all.

However, if a desired domain name is on a “market premium” or “registry premium” list, the post-Sunrise period pricing will not decrease: Market premium domain names will continue to cost $2499, and registry premium names will be offered at an unidentified price to be negotiated. The registry Vox Populi has not yet published the market premium and registry premium lists. We expect that some valuable trademarks will be on these lists, along with desirable generic terms such as “divorce.sucks” and “life.sucks”.

What is a trademark owner to do? Brand owners face a difficult dilemma—whether to opt for the “safe harbor” of a Sunrise or other registration, or take the chance that a third party will take control over the Brand.Sucks domain name. The price for the protection is steep. And, registering for BRAND.SUCKS will not prevent an irate consumer from registering similarly negative domain names—for example, BRANDREALLY.SUCKS or WHYBRAND.SUCKS. It is impossible to avoid ALL variations. Moreover, other consumer criticism top level domains will launch later, such as .GRIPE and .WTF.

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We expect that, from an overall corporate strategy perspective, some trademark owners will opt to register at least KEYBRAND.SUCKS as a precaution during the Sunrise Period. Others may try to obtain blocking or regular registrations when the .SUCKS general registration period opens on June 1. At that point the pricing will be lower—unless one’s brand is on the market premium or registry premium list. If it is, the higher pricing will prevail indefinitely.

A brand owner whose brand was hijacked for an unauthorized .SUCKS registration could file a procedure under ICANN’s Uniform Dispute Resolution Policy (UDRP) or the Uniform Rapid Suspension (URS) procedures—which have traditionally been used to challenge infringing domain names registrations. Or a trademark owner could sue a registrant for infringement or dilution. However “likelihood of confusion” and/or “bad faith” have generally been required elements in such actions; proof of likely confusion or bad faith may be difficult to prove in a .SUCKS context. First, as it is unlikely that a consumer would think that a brand owner authorized a .SUCKS website or forum, as the “sucks” TLD signals criticism. So a consumer is not likely to confuse a .SUCKS website with an authorized webpage or think that the brand owner endorsed it. Second, in view of the non-commercial usage and purpose of the .SUCKS “forum” as well as the strong First Amendment tolerance for personal opinion and criticism, it will likely be difficult to show that a registration was obtained in “bad faith.” Further, brand owners will be allowed to respond to comments on consumer forum pages, so will arguably have a chance to refute negative comments.

Trademark owners should keep their eyes on the June 1 “general” launch for blocking and “regular” domain name availability in the .SUCKS domain. Blocks will NOT be available for registry premium or market premium domain names, though. Trademark owners also will need to monitor the “consumer advocate” forum pages after the $9.95 consumer registrations become available in the fall.

Additional action and hearings can be expected from the government agencies, as well as Congress and within ICANN itself. Thus, the FTC or the Canadian OCA may decide to investigate whether the .SUCKS pricing or other conduct is unlawful, and Congress will likely hold additional hearings to air issues relating to the registry. While it is doubtful that Congress will enact a law barring the .SUCKS registry from operating, the controversy gives ammunition to those who object to the U.S. government’s decision to reduce its oversight of ICANN. ICANN is engaged in an internal debate as well. ICANN’s Business Constituency, in a May 8, 2015 letter, criticized ICANN for trying to hand the .SUCKS debate off to the governments. The letter asserted that ICANN has ample power to address the .SUCKS issues, which the Business Constituency criticized as violating ICANN’s policies and principles.

It also appears that Vox Populi has begun to join the public debate in its own defense. On May 11, 2015, Vox Populi’s lawyers sent a letter to ICANN protesting the “defamatory allegations” that ICANN made to the FTC and the OCA. The letter chastised ICANN: “Your letter [to the FTC/OCA] identifies no law that has been broken, no regulation that has been transgressed, and no contractual provision that has been breached.” ICANN has not yet responded to the letter.

While it is clear that the .SUCKS debate is far from over, from a trademark owner’s view, it is fair to say that .SUCKS.SUCKS.

Contributing Author

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Deborah Lodge

Deborah Lodge is a Partner in Intellectual Property at Squire Patton Boggs in Washington, DC, where she advises clients on trademark, privacy and Internet law....

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