May 31, 2015 Deadline for Trademark Holders to Acquire Potentially Damaging Website Domain Suffix (“.SUCKS”)

By: Katherine M. Bond, Esq.

The sunrise period for trademark owners to acquire the .SUCKS domain suffix will expire on May 31, 2015.

On June 1, 2015 the Generic Top-Level Domain (“gTLD”) (a domain suffix) _____.SUCKS will be released to the general public.  This domain suffix has the potential to be damaging to well-known brands including consumer product, manufacturing and service companies.

Prior to a new gTLD being released to the general public for purchase, trademark holders have the exclusive right to buy the new gTLD during a sunrise period.  In order to purchase the gTLD during the sunrise period, a trademark holder needs an .SMD file from the Trademark Clearinghouse. The acquisition of an .SMD file may take a day or several days and requires proof of valid trademark rights.

The cost to obtain an .SMD is $250/mark/year. This is a service fee from a domain company and must be renewed annually. Once an .SMD file is obtained for a mark, it can be used in conjunction with the purchase of any gTLD during the sunrise period, including a .SUCKS domain.  The current cost to purchase a .SUCKS domain during the sunrise period (from the third party in control of the gTLD) is $2,500.

If you fail to acquire the .SUCKS gTLD on or before May 31, 2015, the opportunity to purchase the domain will be opened to the general public. While there are remedies to prevent a third party from using a domain in a manner that infringes upon the rights of a trademark holder, the owner of the new .SUCKS gTLD will likely assert that the content posted is constitutionally protected free speech, leaving the trademark holder without a remedy to remove the web site.

Leech Tishman’s Intellectual Property Practice Group is prepared to answer your questions and assist you in protecting your brand in this regard. You can contact them at ipinfo@leechtishman.com or by calling toll-free 1-855-UR-IDEAS.

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