As many brand owners may know, the Internet Corporation for Assigned Names and Numbers (“ICANN”) recently approved the .sucks gTLD. The Sunrise period for trademark owners to register .sucks domain names containing their trademarks begins on March 30, 2015; the general availability period begins on June 1, 2015. We recommend that brand owners consider registering their main brand or trademark as a .sucks domain to block third parties from doing the same.
Brand owners who register their trademarks with the Trademark Clearinghouse have an opportunity to register .sucks (or other gTLD) domain names that consist of their identical trademarks (e.g., xyzbrand.sucks) during the Sunrise period. The cost to register “.sucks” domain names featuring a registered trademark during the Sunrise period is $2,499/year, plus $250/year to register the trademark with the Trademark Clearinghouse. Because it can take up to eight weeks to register a mark with the Trademark Clearinghouse, we recommend that any brand owners who have not already done so should register their main trademark with the Trademark Clearinghouse as soon as possible so they can take advantage of the .sucks Sunrise period.
Beginning on June 1, 2015, .sucks registration will be opened to the general public, and anyone can purchase .sucks domain names for $249/year.
As with the traditional gTLDs (.com, .net, .info, etc.), in the event that a third party attempts to register a .sucks domain name that incorporates a registered trademark or a confusingly similar mark, the trademark owner can still take advantage of ICANN’s enforcement mechanisms, such as the Uniform Dispute Resolution Policy (“UDRP”) or Uniform Rapid Suspension (“URS”) procedure. However, a UDRP or URS complaint will only be successful if the third party lacks any legitimate use of the .sucks domain name (e.g., if the domain is used for a parked website that generates click-through advertising revenue). In many cases, a .sucks criticism website would be considered fair and noncommercial use of a site; in such cases, a trademark owner could not recover the .sucks domain in a UDRP or URS proceeding.
We therefore recommend that brand owners register their main trademark as a .sucks domain during the Sunrise period. 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.
