Not only have brand owners had to consider blocking their trademarks in the new gTLDs .porn and .adult, but now they have to consider what to do about the new toplevel .sucks.
The toplevel was created (allegedly) to make a platform for free speech. The registry has now gone live and during a so-called sunrise period from 30 March 2015 till 29 May 2015, only brand owners who have registered their trademark in the Trademark Clearing House (TMCH) are able to register that trademark as a .sucks domain name. Unfortunately, however, they will have to pay through their nose if they do so: the minimum price for brand owners will be the official fee of USD 1,999 per year per domain name.
When the registry is opened for the general public after 1 June 2015, individuals (consumers) wanting to register a domain name under .sucks will only have to pay USD 5 per year.
File a complaint?
If someone registers your trademark as a domain name under .sucks and uses it in connection with criticism, you may wonder what your chances are if you decide to file a complaint: the answer is “not good”. Paragraph 4(a) of the UDRP Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
- The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
- The respondent has no rights or legitimate interests with respect to the domain name;
- The domain name has been registered and is being used in bad faith.
A registrant who uses the domain name in connection with criticism will be considered to have a sufficient legitimate interest in the name, and the complainant will not be able to fulfill the second element.
What to do?
Zacco recommends its clients not to do anything. Why should you pay a fortune to register your trademark under .sucks? You cannot hinder free speech or criticism anyway and if you try, it may backfire. It does not matter how many terms you register because there will always be other permutations, either in .sucks or in other gTLDs and ccTLDs, or on social media. This is one of the rare situations, where doing nothing seems the perfect thing to do!
More information: https://www.nic.sucks/