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Intellectual Property Alert >> The Sunrise Period For The <.sucks> gTLD Has Been Extended to June 19, 2015

May 21, 2015

The Internet Corporation for Assigned Names and Numbers (ICANN) continues to roll out new generic top-level domains (gTLDs) for public use. When new gTLDs are released, trademark holders often have an opportunity before the names are made available for public purchase (the Sunrise Period) to register domain names that correspond to their registered trademarks with ICANN’s Trademark Clearinghouse.

Following the Sunrise Period, there is a trademark claims period, during which anyone attempting to register a domain name matching a mark that is recorded in the Trademark Clearinghouse will receive a notification to that effect and be given a chance to decline to complete the registration. This period generally runs for at least 60 days. If a notified party registers the domain name anyway, the Clearinghouse will send a notice to the trademark holder that has a matching record in the Clearinghouse, informing them that someone has registered the domain name.

.Sucks Controversy
Perhaps the most controversial gTLD to date — <.sucks> — is currently in its Sunrise Period. Vox Populi, the registrar behind <.sucks>, has asserted that this domain is a means for Internet users to set up sites that criticize brands, and is designed to “help consumers find their voices and allow companies to find the value in the criticism.” However, others have accused Vox Populi of using the <.sucks> domain to coerce companies concerned with reputation management to buy domain names (at significant cost) that they do not intend to use, simply for defensive purposes. The annual fee if the registration is made during the sunrise period is $2,499 (as compared to fees that will generally run in the range of $199 — $249 once the name is open to the public).

The <.sucks> domain may be of value to certain companies in order to preempt its availability to those who want to set up a gripe site. Multiple decisions have held that the ownership of a domain name comprising a company’s trademark to operate a non-commercial “gripe site” for criticism purposes does not constitute infringement or dilution of that trademark. Hence, a gripe site’s use of a <.sucks> domain may not be actionable, and therefore some trademark owners may want to prevent the <.sucks> domain that corresponds to their mark from falling into someone else’s hands.

Court Decisions
In Bally Total Fitness Holding Corp. v. Faber, the U.S. District Court for the Central District of California held that the defendant did not violate the plaintiff’s trademark rights in the mark “Bally” by using the name “Bally Sucks” and URL <www.compupix.com/ballysucks> in connection with a website that aggregated customer complaints against Bally. Similarly, in Bosley Medical Institute, Inc. v. Kremer, the U.S. Court of Appeals for the Ninth Circuit held that the defendant’s registration and use of a domain name comprising the plaintiff’s registered trademark “Bosley Medical” as a “gripe site” criticizing the plaintiff’s hair restoration services did not violate the plaintiff’s trademark rights. The court found that “Bosley cannot use the Lanham Act either as a shield from Kremer’s criticism, or as a sword to shut Kremer up.”

Bottom Line

The Sunrise Period for the <.sucks> gTLD has been extended to June 19, 2015. Owners of registered trademarks who register or have already registered with the Trademark Clearinghouse by that date will have the first opportunity to purchase a <.sucks> domain name. Trademark owners who do not register by that date may have more limited options for protecting their marks against gripe sites. Beginning June 1, 2015, <.sucks> domain names will be available to the general public, and will be granted on a first-come, first-served basis.

Author(s)

JEFFREY C. KATZ
Partner
212.468.4823
jkatz@dglaw.com
Intellectual Property