Trademark Owners to Domain Name Registry: That .sucks
Seller Beware: Consumer Protection Insights for Industry
On April 9, 2015, the Internet Corporation for Assigned Names and Numbers (ICANN), the body governing the registration of domain names, initiated an inquiry into the practices of the Canadian company Vox Populi, the domain name registry that was selected to operate the ".sucks" generic top level domain. In a letter to the Federal Trade Commission, ICANN asked whether the new registry's practice of selling second-level domain names to trademark owners at exorbitant prices violated any American laws. A second level domain is the name to the left of the "dot" such as "trademark" in "trademark.sucks" ICANN's letter, as well as the pricing practices of Vox Populi, have garnered significant attention in the media, and some, including West Virginia Senator Jay Rockefeller, have accused Vox Populi of running a "little more than a predatory shakedown scheme."
The specific practice drawing ire from some trademark owners is Vox Populi's sunrise period pricing. ICANN mandates that all registries of new gTLDs observe a "sunrise period" of at least thirty days during which trademark owners can register second-level domains incorporating corresponding to their registered marks before domain names are made available to the general public. Vox Populi is charging trademark owners $2,499.00 per domain registration during the sunrise period for the .sucks gTLD, which ranges from March 30 to May 29, 2015. This rate dramatically exceeds what domain name registrars typically charge during sunrise periods for registration of domain names within their new top level domain spaces. Moreover, this rate is far greater than the amount that Vox Populi intends eventually to charge non-trademark owners for registering any domains with the ".sucks" gTLD that remain unclaimed at the end of the sunrise period.
The success of Vox Populi's practices should hinge at least in part on whether trademark owners believe that registrants of second-level domain names in the .sucks gTLD will be able to resist trademark owners' attempts to compel the transfer of those domain names through ICANN's arbitration procedure, the Uniform Domain Name Dispute Resolution Policy (UDRP).
Barring an intervention from ICANN, the sunrise period for the .sucks domain ends on May 29, 2015, at which point any interested Internet user will be able to purchase second-level domain strings including registered trademarks without proving trademark ownership. It will then be up to trademark owners to test Vox Populi's pricing practices. It also remains to be seen how ICANN arbitration panels will treat domain names incorporating the new ".sucks" gTLD. Conceivably, some registrants will argue that ".sucks" names should receive free speech protection -- an argument that ICANN panels generally have not welcomed when "sucks" forms part of the second level domain. See, e.g., Ashley Furniture Industries, Inc. v. Telos CHAMIR American.
© Arnold & Porter Kaye Scholer LLP 2015 All Rights Reserved. This blog post is intended to be a general summary of the law and does not constitute legal advice. You should consult with counsel to determine applicable legal requirements in a specific fact situation.