Cost v benefit: assessing the ‘.porn’, ‘.adult’, ‘.sucks’ defensive registration proposition 24 Mar 15
The ‘.adult’, ‘.porn’ and ‘.sucks’ gTLDs are likely to pose particular challenges to brand owners, not least uncertainty over the likely success of Uniform Dispute Resolution Policy (UDRP) actions against registrations in these strings. So, what’s a brand to do?
This week, the sunrise period for ICM Registry’s ‘.adult’ and ‘.porn’ TLDs has received a fair level of media coverage, sparked by the news that Taylor Swift had snapped up ‘taylorswift.porn’ and ‘taylorswift.adult’ (the reports also noted that a number of corporates had similarly registered their trademark terms in the space but - no disrespect to the likes of Microsoft and Harvard University - it’s safe to say that Swift’s registrations gave the stories their pull). As we reported previously, the sunrise for these strings closes on April 1, but will be followed with sunrise B period and domain matching windows before general availability opens on June 4.
When looking at the array of gTLDs coming to market, trademark owners do need to consider these adult-related strings, not least because a ‘wait and see’ approach may not work for the type of infringement likely to occur in an adult online space. Speaking to WTR, Trademark Clearinghouse (TMCH) sales and marketing manager, Peter Van De Wielle, acknowledges that “many trademark owners and brand managers are holding off on registering their trademarked terms in new gTLDs because it’s just too many TLDs to deal with and, if there is a real issue, they can proceed against the domain name registrant under a UDRP and retrieve the name through that process”.
However, he argues that such an approach may not be effective in adult strings, explaining: “With the launch of ‘.porn’ and ‘.adult’, retrieving a name via a UDRP may prove to be more challenging because, for these TLDs, there may be legitimate uses of marks. Specifically, parody is a valid defence to trademark infringement and may serve to convince a UDRP panel that the domain name in question is legitimate use/not bad faith. There is a significant genre in adult entertainment regarding parodies; moreover, with the popularity of concepts like ‘foodporn’, the use of the domain name may be legitimate. Hence, trademark owners will want to ensure they register their marks in these new TLDs, because the same ‘wait and see’ UDRP approach may not work for these particular TLDs.”
For its part, ICM Registry has tried to soften the financial blow of registering in these strings, offering trademark owners wishing to keep their trademark terms in these adult strings out of the hands of cybersquatters access to reduced TMCH fees. In contrast, while Vox Populi’s ‘.sucks’ will likely cause similar issues with respect UDRP effectiveness, the picture is complicated by the high cost of registration – making the determination over defensive registrations a tricky process.
First, let’s look at the situation with UDRPs, in which the treatment of criticism sites can differ. As Hogan Lovells’ David Taylor and Jane Seager note, “most panels, although not all, take the view that the right to criticise does not extend to registering and using a domain name that is identical, or confusingly similar to, a complainant's trademark. However, a small group of panels, particularly in the United States, take the view that a respondent has a legitimate interest in using a trademark as part of a domain name for a genuine criticism site if such use is fair and non-commercial, irrespective of whether the domain name as such connotes criticism. Cases involving criticism sites are therefore one of the few areas where UDRP panels' views may legitimately differ on the same facts, particularly when a domain name is identical to the trademark at issue, which makes it difficult to predict the outcome of a complaint.”
So the treatment of criticism sites in UDRP actions can be hard to predict and, with ‘.sucks’ essentially established as a criticism platform, there is a real risk that ‘.sucks’ domains will be tricky to retrieve. So, as in the two adult strings, defensive registrations are the safer option, right? Well, perhaps, but they aren’t a cost-effective option.
As we reported previously, the sunrise for ‘.sucks’ opens next week but sunrise registrations (and most brand-related registrations outside sunrise) in the ‘.sucks’ string will cost $2,499, making defensive registrations a costly proposition. A client advisory notice issued yesterday by Katten Muchin Rosenman’s Brian J Winterfeldt, Phillip V Marano and Griffin M Barnett suggested that “organisations will likely want to assess very carefully whether a domain name in the ‘.sucks’ new gTLD will ever be worth a $2,499 annual registration/renewal fee - especially given the myriad variations or typosquatted names that are possible and would also be available for registration”.
The latter point is an important one –you can pay to remove, say, ‘apple.sucks’ from the equation, but there are still opportunities for third parties to opt for ‘applereally.sucks’ or some such.
That said, there will be those who do see a business case to make defensive registrations, as MarkMonitor’s Elisa Cooper notes: “There is a big part of me that would like to tell brands to simply walk away, and to forgo any registrations in this TLD. However, when I think of the fallout that could occur within our clients’ companies when ‘.sucks’ sites start popping up, I cannot in good faith recommend this approach. Furthermore, I believe that recovery of these domains using traditional methods will be extremely difficult. I know that we will have client sunrise registrations.”
For its part, MarkMonitor has announced it will charge just a $25 admin fee per registration, bringing the sunrise cost down to $2,024. It’s a wholly positive move by MarkMonitor, but still leaves brand owners having to dig deep if they do wish to defensively register. Many will choose not to – leaving them to take their chances with the UDRP where potentially infringing sites are identified. With ‘adult’ and ‘porn’, the cost-benefit analysis is at least a little easier to assess.
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