By: Scott Hervey
The word that comes after the period in a domain name is referred to as a top level domain (“TLD”) and there seems to be a TLD for everything. There are TLDs that reflect geographic regions such as “.ASIA” for the Asia-Pacific region and .IRISH for the global Irish community. There are numerous other TLDs that reflect a wide variety of interests, including professions (“.ACTOR” for actors and “.ACCOUNTANTS” for accountants). Just when you think you have seen everything, along comes a proposed new TLD that causes a huge uproar among trademark owners.
Vox Populi Registry Inc. was granted the right to operate the registry for a “.SUCKS” TLD. The stated purpose of the .SUCKS TLD is to facilitate First Amendment criticism of companies, organizations or products. Trademark owners say that Vox is a shakedown artist and the sole purpose of the .SUCKS registry is to cause trademark owners to purchase expensive domains in order to defend their brands. In support of this allegation, trademark owners point to the fact that Vox will charge trademark owners approximately $2500 and up to register a .SUCKS domain name during the Sunrise Period. (A Sunrise Period is a period of time during the rollout of a new TLD in which trademark owners have the right to register domain names which reflect their brands in the new TLD.) Trademark owners argue that when compared to the registration fee of $249 charged by Vox during the general availability period and when compared to the few hundred dollars charged by other TLD registrars during their Sunrise Period, it is obvious that this scheme is nothing more than “predatory, exploitative and coercive.”
In most circumstances, a third party may not use the trademark of another as part of a domain name. This could give rise to a claim of cyber squatting. Under the policies that govern the registration of most domain names, whether an individual is engaged in cyber squatting is determined by analyzing the following factors:
(1) whether the disputed domain name is identical or confusingly similar to the complainant’s trademark;
(2) whether the domain-name holder lacks rights or a legitimate interest in the disputed domain name; and
(3) whether the disputed domain name was registered and is being used in bad faith.
In order to prevail on a cyber-squatting claim, the complainant must establish all three factors.
Often, the respondent will contend that it is making a legitimate noncommercial fair use of the disputed domain name through the operation of a gripe/complaint web site. Domain name dispute proceedings have held that First Amendment expressions of protected speech must be balanced against trademark rights. The holder of a disputed domain name has extensive rights of free speech to provide a platform to criticize and the content of a web site is a legitimate use of those rights. However, the domain name registrant cannot chose a domain name that is confusingly similar to the trademark of the subject matter of its complaints. In cases where a domain holder has registered a domain name that incorporates a trademark and appends the word “sucks” prior to the .COM (i.e., “xyzsucks.com”) and the domain name points to a complaint or protest site, domain name dispute decisions have found legitimate interests based on the right of free speech and the fair use doctrine.
Vox claims that the purpose of the .SUCKS TLD is to give users an opportunity to express protected complaint speech online and register a domain name that indicates the nature of such speech. Trademark owners complain that they are compelled to register their trademarks in the .SUCKS TLD to defend against competitors and unfair criticism. Vox counters that if the competitive use or criticism is unfair, trademark owners have a full complement of remedies that they can seek, including domain name dispute proceedings.
Each side presents compelling arguments. Are trademark owners concerned about preventing illegitimate and legitimate complaint sites and are just upset because of the steep registration cost? Or, is Vox exploiting the trademark owners’ sensitivity and desire to protect their brands? ICANN, the organization responsible for the coordination of domain names – which entered into a contract with Vox to manage the .SUCKS registry – has asked the FTC to look into the allegations made by trademark owners.