Why would a trademark holder spend thousands of dollars to register a website address suggesting that its brand sucks?
To prevent others from doing the same. A spate of recently approved generic top-level domains (gTLDs) is stirring up controversy and more than a little concern among brand owners and businesses looking to protect their reputations online. The system for registering Internet domain names is administered by a single international non-governmental organization, the Internet Corporation for Assigned Names and Numbers (ICANN). ICANN has the ability to authorize private companies to become registrars for new gTLDs. Until recently, people seeking to register domains for their brand were limited to choosing among a relatively small set of gTLDs such as .com, .org, .net, .biz, gov and a few country-specific domains such as .us and .ly. Last year, however, ICANN began to authorize the use of many new gTLDs, including sought-after domains such as “.beer,” “.porn,” and “.sucks.” Each new gTLD is managed and sold by a particular (often commercial) domain name registrar. Most registrars charge a relatively nominal registration fee (i.e., $10-$35 per name, per year). Defying the industry standard, Vox Populi, the Canadian company authorized to be the registrar for .sucks, has been charging some brand owners $2499 per year for the right to register the .sucks domain name associated with their brand – a practice which critics are calling “predatory.” Use of a .sucks domain name brings into conflict the right of a brand owner to protect its trademark against the right of a consumer to engage in First Amendment-protected free speech by criticizing the brand. For its part, Vox Populi has positioned itself as a crusader for consumer voices and .sucks as a tool for free expression. In a video entitled “Our Vision of the Conversation,” the company juxtaposes footage of protesters and smiling families with the words of Ralph Nader and Martin Luther King, Jr.: https://www.youtube.com/watch?v=mj-_EIUSlvY In response to brand owners’ outrage, ICANN submitted a request to government agencies in both the U.S. and Canada calling for a legal review of Vox Populi’s pricing strategy for .sucks. Pending further developments, trademark owners may register their marks with the USPTO and record such registrations with the Trademark Clearinghouse. They may also purchase various new domain names, but this approach may have limited results because there are a very large number of ways a disgruntled consumer could use .sucks to protest a brand (i.e., yourcompany.sucks, yourcompanyreally.sucks and yourcompanytotally.sucks). For the new gTLDs, brand owners who have registered their marks with the Trademark Clearinghouse have a limited time (30 days or more) known as a “sunrise period” within which to register the domains associated with their brand before the registrar offers such domains to the general public. The .sucks sunrise period ends on May 31, 2015. If you have any questions or need help making sense of how to handle the new gTLDs, make sure to talk to an IP attorney. Click here to learn more about how Offit Kurman’s intellectual property practice group helps businesses, organizations, and individuals protect their IP assets and minimize their risks both online and offline.
ABOUT JONATHAN WACHS
Jonathan Wachs provides strategic counseling and operational advice to clients in the areas of intellectual property, commercial transactions and outsourced legal departments. As head of the firm’s Intellectual Property Group, Mr. Wachs works closely with clients to develop, register, analyze, enforce, and transfer intellectual property assets in a customized, cost-efficient, and highly effective manner. Additionally, he conducts intellectual property audits through which clients learn the nature and value of their intellectual property assets and the steps needed to protect such assets from misappropriation or dilution. As a business lawyer, he has successfully negotiated and completed several multimillion dollar business transactions and has served as general counsel to several small and midsize businesses and organizations in various industries and professions. He also manages a blog about intellectual property issues, Friday Factoids. Mr. Wachs co-manages New Paradigm Counsel, a service through which Offit Kurman delivers customized, comprehensive and cost-effective outsourced legal departments. Through New Paradigm Counsel, Jon served as outsourced general counsel for a government contractor, a large printing business, a payment processing company and an identity theft restoration business. You can also connect with Offit Kurman via Facebook, Twitter, Google+, YouTube, and LinkedIn. WASHINGTON | BALTIMORE | FREDERICK | PHILADELPHIA | WILMINGTON | VIRGINIA | NEW YORK