Your brand. Arguably, nothing is more important to your company. Without your brand, the years you spent carefully crafting customer goodwill could evaporate overnight. For most companies, carefully managing their online presence—through their company website and social media presence—has become a crucial part of maintaining their brand identity.
Recently, ICANN—the non-profit entity responsible for managing domain extensions—has begun releasing hundreds of new generic top level domains (a.k.a. gTLDs) onto the market. Generic top level domains are the end – the last part of a url’s architecture. Traditionally, they have been three letter extensions such as “.com” or “.edu”. Now, however, dozens of new generic top level domain extensions are coming—or have already come—onto the market. Things like “.baby” “.equipment” and “.scholarships”. These new domains bring numerous opportunities for brand extension—just ask Google which spent
$25 million for the entire “.app” generic top level domain extension or Amazon which
spent close to $5 million for “.buy”.
But, with these new generic top level domains come new challenges for brand protection. Just ask former New York Mayor Michael Bloomberg, whose lawyers have reportedly purchased dozens of unflattering domains with the recently released “.nyc” extension, including: “BloombergIsALoser.nyc”, “BloombergIsTooRich.nyc” and “MichaelBloombergIsTooShortToBePresident.nyc”.
Perhaps no soon-to-issue generic top level domain extension presents as many trademark or brand protection issues as “.sucks”. Imagine the damage which someone with a www.YourCompanyNameHere.sucks domain name could inflict. Vox Populi, the company which won the ICANN bid to oversee .sucks domains, will reportedly charge between $10 and $249 for most .sucks registrations. But, here’s where things get complicated. For registered trademark owners seeking a .sucks extension
during the early-registration (aka “sunrise”) period, the annual fee
gets bumped up to $2,499.00. Sunrise for .sucks domains began March 30th and ends May 29th of this year, while the general period opens on June 1st.
Currently, it is unclear how much .sucks domains will cost for well-known trademarks after this sunrise period. It is also unclear whether there may be a different, higher price for registered mark holders as opposed to private citizens. For example, after the sunrise period, Vox Populi offers something called a “Consumer Advocate Subsidized” plan with an MSRP of only $9.95—a plan which appears available only to consumers as opposed to corporate registrants.
Moreover, Vox Populi currently suggests that so called “Premium” domains will be individually priced—costing at least $249.00 to renew annually. However, Vox Populi has not yet defined what constitutes a “Premium” domain, and some commentators fear that this could include well-known brands.
How unauthorized use of a .sucks extension in conjunction with a registered trademark will affect legal exposure remains an unanswered question. For example, someone who registers a .sucks domain would likely raise free speech arguments defending their right to the domain against objections from the trademark owner.
Fifteen years ago, when the internet was only populated by two and three level domain extensions such as “.com” or “.org”, the Second Circuit Court of Appeals in Name.Space, Inc. v. Network Solutions, Inc., held that “existing gTLDs are not protected speech, but only because [they are limited] to three-letter afterthoughts such as .com and .net, which are lacking in expressive content.” The Court arguably left the door open, however, when it discussed how longer and more content-filled generic top level domains “like ‘.jones_for_president’ and ‘.smith_for_senate'” might constitute protected speech.”
In another fascinating case, Taubman Co. v. Webfeats, the Sixth Circuit Court of Appeals found that the domain name “taubmansucks.com”—when linked to a website running an editorial against the defendant’s then-ongoing legal battle with the Taubman Company—was “purely an exhibition of Free Speech”.
Undoubtedly, this area of law will continue developing, though many litigation-wary companies may prefer simply to try to protect their valuable brands by registering unflattering .sucks domains themselves.
