The Internet (including social media) has made trade mark owners aware of the need to put policies into place to address the risks that their brands and business are exposed in the online environment. Some have been more successful than others by responding positively to comments made via Twitter and Facebook, embracing the interaction.
Usually the complaint does not affect a brand’s reputation but the response or lack thereof does. Promptly responding to complaints and offering a solution demonstrates to the public that no business is perfect and that rectifications can occur after the fact. Putting a BandAid ™ on a cut does not take away the pain but helps in the healing process.
Now let’s ripoff that BandAid ™ and deal with a TLD that may hurt many trade marks owners.
On 30 March 2015 another headache for trade marks owners will launch
.Sucks is a new generic Top Level Domain (gTLD), which according to the Registry (Vox Populi Registry Ltd), aims to create an online space where consumers can voice their opinions and criticise businesses and brands.
It sounds noble but the approach taken appears to be rather threatening. Watch the .suck video at https://youtu.be/D-yP3cH25-k
For those not familiar with the US or Hollywood, SUCKS is an American term used to describe something that is terrible, despicable or unpleasant.
A more appropriate new gTLD would be .protest, which is synonymous with change, constructive criticism and furthering a cause.
Why is .sucks threatening?
- The cost to register a .sucks domain name during the Sunrise (priority period for trade mark owners) is $2,533
- After the Sunrise it will cost $212.50 to block a .sucks domain name (non-resolving) per year or $280.50 to register a .sucks domain name that can be used.
If you wish to register a .sucks domain name to rant you can register it under the Consumer Advocate Subsidized program for only $9.95 a year. The Registry described the program, on its websites as follows:
“Everything.sucks, a consumer advocacy forum platform, has contracted with dotSucks to subsidize the purchase of domains for individual consumers that wish to host a forum discussion website.
All dotSucks domains registered under this subsidy program will be provided a free, hosted, consumer forum courtesy of everything.sucks. For example, www.ProductA.sucks will resolve to a website with a discussion-forum on ProductA. The owner of the dotSucks domain may customize their forum settings. “
.sucks is different to other high risk TLDs such as .xxx, .porn and .adult in that a user reading the domain name burgerking.porn knows that Burger King has not entered the adult entertainment industry and would assume it is a parody or an opportunistic registration. Burgerking.sucks, on the other hand, identifies an issue in the minds of the public without having to view the content associated with the domain name.
The realm of fair use, freedom of speech and criticism add a complexity to UDRP (a domain name recovery mechanism for trade mark owners) complaints, which is apparent by the brief analysis undertaken by Lexsynergy’s brand protection team. The team identified 89 UDRP decisions relating to domain names that combined a trade mark with the word sucks.
32 decisions were decided in favour of the Respondent (domain name registrant).
57 decisions were decided in favour of the Complainant (trade mark owner).
Approximately 36% of trade marks owners were unsuccessful in recovering a domain name that incorporated its trade marks, with the word sucks proving to be their kryptonite.
Should trade mark owners take the risk seriously?
We would say YES but do not overreact. Register an identical .sucks domain name so that the “infringer” can only register a variation such as burgekingUSA.sucks and rather monitor the use of your brands within this TLD and take action when the associated content warrants it.
You cannot eliminate .sucks infringements but you can mitigate the risk.
Need a .sucks action plan for you trade marks? Get in touch here http://www.lexsynergy.com/contact-lexsynergy