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Registration of trade marks under the controversial new gTLD (Generic Top Level Domain) .sucks is now open. The sunrise period runs until 29 May 2015 for trade mark owners who have registered their trade marks in the Trademark Clearinghouse (TMCH). The general availability period will commence on 1 June 2015, after which anybody can apply to register a .sucks domain.
The .sucks registry is operated by Vox Populi, which has marketed the new gTLD as a forum “designed to help consumers find their voices and allow companies to find the value in criticism”. In addition to the name itself, controversy surrounds the fees being charged to brand owners to register their trade marks under .sucks. The cost to register a .sucks domain during the sunrise period is $2,499 per year, which is significantly higher than the fees charged to register a domain under the other new gTLDs, the same cost will be payable again each time the domain is renewed.
.sucks domain names enter the General Availability phase, during which anybody can apply to register a .sucks domain, on 1 June 2015. The cost to register a domain during General Availability will be $249. As of September 2015, consumers who wish to host a forum discussion website will be able to register .sucks domain names under a Consumer Advocate Subsidy program for under $10 per year. Unfortunately, trade mark owners who have their trade marks registered in the TMCH will not be able to take advantage of these lower rates, the rate of $2,499 still applies for trade mark owners even after the sunrise period closes.
ICANN (Internet Corporation for Assigned Names and Numbers) has asked the US and Canadian trade authorities to investigate Vox Populi’s actions and to take action against the high fees. However, it is unlikely that any action will be taken before the sunrise period closes. Trade Mark owners need to consider the options available to them to protect their brand on the new gTLD.
The options for trade mark owners are:
Register a .sucks during the sunrise period for a cost of $2,499. If the trade mark is not already in the TMCH, you will need to apply to register it in the TMCH first.
If your mark is not in the TMCH, wait until General Availability and register a .sucks domain for a cost of $249. You should note that registration after the Sunrise period is on a first-come-first-served basis. You should also note that if your trade mark is considered to be a Premium name by the Registry, fees will be higher. Premium names are those which are considered to have exceptional value in the context of .sucks, e.g. life.sucks and will be priced individually. Names which have a high value in the market are also considered to be premium names and will cost $2,499 per year.
Consider a blocking registration during the General Availability phase for a cost of $199. This is a defensive registration which allows trade mark owners to reserve domain names. The trade mark owner will not be able to use the domain name. This option is only available for trade marks which were not registered in the TMCH and have not been designated as premium names.
Do not register a .sucks domain and consider any available options to take action against the domain name owner if and when a third party registers a domain name incorporating your brand. To ensure you are alerted if a domain name incorporating your brand is registered, you should subscribe to a domain name watch service.
For those trade mark owners who do not have their trade marks registered in the TMCH and whose trade marks have not been designated as Premium names, there are cheaper options available to protect your brand under the new gTLD. Unfortunately, for trade mark owners who have registered their trade marks with the TMCH, the only options are to pay the annual $2,499 fee or to do nothing and risk a third party applying to register your trade mark under .sucks.
How can A.A. Thornton & Co. help?
If you would like to discuss protecting your brand under the .sucks domain names or if you would like to subscribe to a domain name watch, please do not hesitate to contact a member of our trade mark team.
At A.A. Thornton & Co. our trade mark attorneys are qualified to advise on all aspects of trade mark law. The services of our trade mark attorneys can be viewed here.
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