United States: Make Sure Your Brand Doesn't .suck !

The .sucks domain name registry is preparing to launch, queuing up what promises to be an epic battle between those who build brands and those who condemn them. Touted as a platform "designed to help consumers find their voices and allow companies to find the value in criticism," .sucks is one of the latest -- and most controversial -- generic Top-Level Domain ("gTLD") strings recently made available by the Internet Corporation for Assigned Names and Numbers ("ICANN"). A gTLD is the term to the right of the "dot" in a URL, such as .com, .org or .edu. More than 600 new gTLDs have been delegated by ICANN since 2012, as part of an ICANN initiative to increase the availability of domain names.

Trademark owners would be well-served to consider the likelihood that their marks might be registered as .sucks domain names by disgruntled consumers, cybersquatters or competitors. While use of another party's trademark in a domain name is traditionally actionable where there is resulting consumer confusion, so-called gripe sites are typically protected by the First Amendment if the content of the site makes clear that the site does not emanate from the trademark owner.

Fortunately, there are several options available to help trademark owners protect their marks from falling into unsavory hands. Most significantly, through May 29, 2015, owners of trademarks registered with the Trademark Clearinghouse ("TMCH") maintained by ICANN, have the exclusive right to pre-emptively register their marks as .sucks domain names. (For more information about obtaining a TMCH registration, see our March 22, 2013 KLIP Alert.) The cost to register a domain name during this "sunrise period" is $2,499, with an annual renewal fee of the same amount. According to published reports, several high-profile brand owners, including Microsoft, Google, Kevin Spacey and Taylor Swift, have registered .sucks domain names during this pre-emptive sunrise period, in an effort to protect their brands.

Those trademark owners who have not registered their marks with the TMCH will have an opportunity to register .sucks domain names beginning June 1, 2015, when the .sucks registry opens to the general public on a first-come, first-served basis. The annual fee to register a .sucks domain name during the general availability phase is reported to range from $249 to $2,499, with more well-known trademarks commanding a higher registration fee.

There is also a "domain block" option available, which will give anyone the ability to remove a .sucks domain name from the pool of domain names available for registration. The blocked domain cannot be used unless a standard registration is secured. Domain blocks will be allocated on a first-come, first-served basis, at a price of $199 a year, and may be purchased for up to 10 years at a time. Although at first glance this seems to be the most cost-effective option for brand owners who are unlikely to make use of defensively registered .sucks domain names incorporating their trademarks, domain blocks are not available for domain names identified as "Registry Premium" or "Market Premium" names, categories in which many well-known trademarks are likely to fall.

Given the impending opening of the .sucks registry, it is imperative for brand owners to develop a

strategy to protect their marks against registration by disgruntled consumers, cybersquatters, competitors, or others looking to tarnish a brand's reputation. Those trademark owners with TMCH-registered marks should strongly consider pre-emptively registering the corresponding .sucks domain names during the sunrise period, before registration becomes open to the general public. If you have not registered your marks with the TMCH, you can nonetheless protect your rights by registering .sucks domain names during the general availability phase, or by securing blocking registrations in the case of non-premium names, as long as you act early to be first in line. Since it is not economically practical to register every mark in a brand owner's portfolio, or every variation of a mark that might seem attractive to others, brand owners should also consider putting a watch service in place to monitor the new gTLDs, which would provide notice of potentially infringing third-party domain name registrations.


The Intellectual Property Team

Kramer Levin's Intellectual Property Department represents clients in all aspects of intellectual property law: patents, trademarks, copyrights, trade secrets, technology transactions, unfair competition and false advertising, and Internet and e-commerce. We provide litigation, prosecution and registration, counseling, and transactional services to our clients to help acquire, value, maintain, protect and exploit all forms of their intellectual property assets. Nearly 60 attorneys within the firm devote most or all of their practice to intellectual property matters, giving Kramer Levin one of the larger intellectual property departments in a general practice firm. Attorneys in this group have been recognized by Chambers USA, Legal 500 US, New York Super Lawyers, U.S. News & World Report and Best Lawyers.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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