The 'sunrise period' opened recently for the new .sucks extension, giving brand owners an advance opportunity to register their trademarks as domain names – for commercial or defensive reasons. Once the sunrise period comes to an end, on 29 May 2015, registration will be open to all. How should trademark holders approach this potentially damaging extension?
As the number of top-level domains (TLDs) continues to expand, trademark holders are having to assess each TLD launch for both opportunity and risk. Opportunity to market to customers in new and more innovative ways, versus the risk of opening up their brand to infringement activity, loss of revenue or reputation damage if they decide not to pursue registrations for the new extension.
For many well-known brands, that risk will be particularly acute following the launch of the .sucks domain name extension on 30 March.
Between a rock and a hard place
Whereas some new extensions (such as .luxury, .bank, .clothing or .bike) may enhance the reputation of a brand or its trademarks, by showing immediately to which category the service or product belongs, the .sucks extension has more detrimental implications. It has been set up to give the public the opportunity to criticise a company or brand, albeit with certain limitations.
The question facing companies, therefore, is whether they should defensively register .sucks domain names for their trademarks to stop others from setting up sites to target their brands.
The sunrise period offers them the opportunity for advance registration; however, to be eligible, marks need to be recorded at the Trademark Clearinghouse (TMCH). Sunrise registration for .sucks is also more costly than for general registration. A domain name under this new extension costs 2,950 euro (per year) during sunrise, with the fee expected to drop considerably once the sunrise period ends.
Pursuing such a defensive strategy is costly in other ways too. If you decide to block .sucks activity, then what about other potentially damaging URLs? Where should you draw the line?
Monitoring for misuse
A lot of it will depend on how high profile your business is – and how likely it is to be targeted and/or harmed by a .sucks registration. Many brand owners may choose instead to simply monitor the .sucks launch to see how it develops in the market. Not every new TLD will be successful – some will be picked up by consumers, while others won’t. Some companies may even view .sucks as a legitimate forum for customer feedback.
Nonetheless, monitoring will be key. Novagraaf’s NovaTrack web-monitoring tool provides a simple and cost-effective means of keeping on top of sensitive third-party registrations, such as .sucks. The tool will also capture evidence of infringement or malicious activity should a brand owner seek to take legal steps to close down or retrieve a domain name; for example, via WIPO’s Uniform Dispute Resolution Policy (UDRP) procedure.