Defensive tactics should be a part of the brand protection strategy of every trademark owner. New developments within the area of domain names also make it essential to consider which offensive strategy to have for brand protection.
Domain names are registered with the central authority called ICANN (Internet Corporation for Assigned Names and Numbers). A few years ago it was decided to expand the list of website suffixes (Top level domains – TLD) from the traditional as we know, i.e. .com, .dk and .se to an expanded list.
A long list of TLD’s have been registered already ranging from .adult to .donut, but the newly registered .sucks is causing quite a bit of controversy. Now, you actually have the opportunity to register your trademark under the .sucks domain, and perhaps brand owners should have done so. As of 1 June 2015 non-company affiliated registrations are accepted at the .sucks domain. And this for only $ 9.95. Before sunrise the price for brand owners was $ 2,499. This significant difference in price has also caused a lot of harm; some have even called it economic extortion[i].
Several companies and also celebrities are concerned that their names may be associated with domains and websites that will be created just to discredit these and cause harm to their brands. Apple, Kevin Spacey and Tailor Swift have already registered under the .sucks domain. Actually the .sucks domain was expressly created as being a platform for criticism, “designed to help consumers find their voice and allow companies to find value in criticism”. Vox Populi, the registry company behind .sucks, says they are actively seeking companies to register their brands on the .sucks domain, arguing that it has “the potential to become an essential part of every organization’s customer relationship management program”. They do, however, also hope that the small price for non-company affiliates will attract consumers to register and create a platform for discussion and debate of the different brands. The company has even released a video that includes an endorsement from consumer advocate Ralph Nader, and it includes scenes from civil rights protests with the voice of Martin Luther King. Follow the link to see the video:
The fact that consumers are allowed to use a company name or trademark in a fair manner for the purpose of honest, good-faith criticism and complaints, puts brand owners in a difficult position, as it makes .sucks domains difficult to challenge in UDRP-cases[ii].
Many companies have, however, been dealing with this before, as it has been possible to register domains such as, e.g. x-brandsucks.com since the beginning of the domain system. The criticism and complaints towards a specific brand do however become more explicit under the .sucks domain. Moreover, even when brand owners actually have registered their trademark under .sucks, it is still possible for consumers to register variations, such as x-brandreally.sucks.
Therefore we at Awapatent as IP professionals urge trademark owners to decide which approach to have towards this issue, and preferably as an integrated part of their IP strategy.
At Awapatent we stride to help brand owners in having the best IP strategy possible, we assist our clients in navigating through challenges like e.g. the .sucks domain issue. We also offer surveillance of the registration of third party trademarks in Trademark Clearinghouse in relation to such new TLD’s.
Maria Dam Jensen, Associate, Legal Counsel
[ii] Uniform Domain Name Dispute Resolution Policy