GTLDs: launch of gTLD, does it suck for trademark owners?

Illustration nom de domaineAs part of ICANN’s New gTLD Program, the registry Vox Populi has launched registrations for the <.sucks> domain names.

The TMCH Sunrise period opened on March 30, 2015 and will run until May 29, 2015. General availability registrations will begin on June 1, 2015.

The registration conditions of this new gTLD have caused the outrage of trademark owners and of their representatives.

The main criticism addressed to ICANN and the registry is the unfair pricing scheme. Indeed, the excessive Sunrise price of $2,499 acts as a deterrent for trademark owners whose trademark is registered in the TMCH. The Sunrise period was created as a Right Protection Mechanism to prevent cybersquatting and enable trademark owners to position themselves before others to protect their trademark rights on the Internet.

This inequality targeting specifically trademark owners is reinforced by the difference with the public prices of the general availability period, as the latter costs only 10% of the Sunrise price ($249). Subsidized offers are also available to third-parties for less than $10, widening the price gap and accessibility of the domain names between trademark owners and third-parties. This will ultimately deter trademark owners from registering domain names during the Sunrise period. It seems that the registry is using TMCH registrations and the Sunrise period against trademark owners.

Additionally, during the general availability period, Premium domain names will also be priced excessively. These Premium names, chosen arbitrarily, often include trademarks registered in the TMCH. Though this is detrimental for trademark owners, it might also deter cybersquatting patterns of conduct.

The price scheme shows the registry wishes to encourage individuals to register <.sucks> domain names with its subsidized offer for less than $10. Vox Populi wants the new gTLD to be used as a “central town square”, a place where valuable criticism is given. With this subsidized offer, the domain name will point directly to a ready-made forum on, encouraging people to criticize the trademark.

In this light, trademark owners are confronted to a major strategy issue:

–       Invest in domain names to protect their trademark rights by preventing cybersquatting,

–       Or defend their trademarks from abusive registrations ex post.

However, both of these options have downsides and obstacles. Indeed, the preventive registration strategy will be both very costly and only partially effective as the registration of alternative domain names comprising the trademark and typosquatting will not be prevented by early registration. As for the defense strategy, it will be strongly impacted by the meaning inherent to the <.sucks> gTLD and the freedom of speech can prevail on trademark rights.

In conclusion, opportunities and strategy should be one of the trademark owners’ main concerns when wanting to protect and defend their rights on the Internet regarding the <.sucks> gTLD. Dreyfus can assist you regarding the opportunity to register a domain name in the <.sucks> gTLD.