The recent top-level domain name explosion has been of great interest to existing brand owners and new market entrants alike. No longer is a business limited to deciding which of a few top-level domains, such as .com, .net, .org., .us or various country-specific domains, to select when registering for a new Internet address. Under the new generic top-level domain (gTLD) program administered by the Internet Corporation for Assigned Names and Numbers (ICANN), the number of top-level domains available has greatly expanded, including generic terms that identify a variety of products, services, content, and Web users (e.g., .business), geographic indicators (e.g., .nyc), and well-known brands (e.g., .google). Vox Populi Registry, the domain registrar for .sucks, recently announced it will set the fee to register a .sucks top-level domain name, both in the sunrise period reserved for trademark owners and thereafter, for $2,499. While both the sunrise and general registration fee are significantly higher than most other gTLDs, the detrimental effect of having BRAND.sucks held (and used) by an unrelated, and perhaps unfriendly, third party could be significantly more expensive in the long run.
Vox Populi Registry will charge an additional fee of $299+ for premium domain names – such as marriage.sucks or divorce.sucks – that the registrar deems to be particularly valuable or desirable. The sunrise period starts March 30th and general registration begins June 1st. If the brand owner opts to not register its own trademark on the .sucks registry, and someone else obtains the registration, options include a lawsuit under the federal antipiracy law, the UDRP procedure and the URS procedure. Considering that paypalsucks.com and other similar sites are allowed to operate under freedom of speech and fair use grounds, businesses should (quickly) consider whether to proactively register their own company's .sucks domain to prevent it from falling into the hands of those operating in bad faith.
General consumers will be able to register .sucks domains for $10 during general registration under the "consumer advocate subsidy" for sites that redirect to discussion forums on the everything.sucks domain, and $249 for standard registrations.
The expansion of new gTLDs has also caused some confusion and concern with brand owners. Specifically, what a brand owner must do to protect against the registration of a new domain for an existing business, mark, or brand by an unrelated party, or worse, a competitor. While some major brands have opted to apply to administer their own .BRAND gTLDs (e.g., .nike and .google,), other organizations opt to use existing remedies at law and administrative processes, such as the Uniform Domain Name Dispute-Resolution Policy (UDRP) administered by ICANN, along with a few new administrative programs as part of the gTLD expansion. New gTLD registrars are required to offer a sunrise period for existing trademark owners to pre-register trademarks under the new domain scheme prior to making those marks/domains available to the general public. It is often prudent for existing trademark owners to participate in this pre-registration process to avoid losing out to a third party whose goals may not be aligned with your business.
Brand owners can protect themselves by being proactive about new gTLD registrations by obtaining federal trademark registrations on their name and key brands, and then using those registrations to take advantage of the various sunrise registration periods made available by domain registrars, like Vox Populi Registry, to proactively protect and register new domain names under that gTLD. This requires advice and guidance on the various gTLD sunrise launches and registration periods (which range from 30-60 days). Brand owners should also consider defensive domain registrations as new gTLD registration periods open. At an average cost of $10-$25 to register most domain names, it is often prudent to register company names, taglines, key product names, and common misspellings of those items at the outset, rather than to pursue enforcement actions after the fact. Finally, brand owners may consider registering and recording their trademarks in the Trademark Clearinghouse operated by ICANN to obtain notice of third party registration of domain names which match the trademarked name.
How Polsinelli Can Help
For more information about the .sucks gTLDs or other gTLD best practices, contact the author or your Polsinelli attorney.