Michael Lerner

Monday - May 10, 2010

My domain

Last week I received the following e-mail:

“Dear Sir/Madam

I’m sorry to disturb you so abrupt. We are a domain name registration service company in Asia,

On 4th May. we received a formal application submitted by Mr. John Wang who wanted to use the keyword “learnthenet” to register the Internet Brand and with suffix such as .cn /.com.cn /.net.cn/.hk/.asia/ domain names.

After our initial examination, we found that these domain names to be applied for registration are same as your domain name and trademark. We aren’t sure whether you have any relation with him. Because these domain names would produce possible dispute, now we have hold down his registration, but if we do not get your company’s an reply in the next 5 working days, we will approve his application

As authorized anti-cybersquatting organization we hereby suspect Mr. John Wang is a domain investor. so we need you to attach importance to this issue.”

The e-mail came from someone named Tina (tina@domainnamesasia.com), with no last name given, nor any company listed, just a postal address in NanTong City, which I later discovered is about 65 miles northwest of Shanghai, China.

As the owner of the trademark for Learn the Net, I e-mailed Tina that the name is protected under U.S. and international law and that they should not allow John Wang to register the name.

Tina replied: “You would know domain name takes open registration, this is international domain name registration principle. So Mr. John Wang has right to register it.

If you think his registration will confuse your clients and harm your profits, we can send an application document to you and help you register these domains within our approving period. This is a better way to prevent domain name dispute.”

Of course Tina is wrong about “domain name takes open registration”. Under the protocol established by ICANN, the Internet Corporation for Assigned Names and Numbers, the organization that approves Internet registrars, if a registrar knows that the registrant of a domain name is infringing on a trademark, it should deny the request. (More on this in a moment.) In fact “Tina” had acknowledged the infringement in her initial e-mail.

At this point, I got suspicious. I know that to register a .cn domain suffix, the Chinese government requires that you have a branch office in China or be a wholly owned subsidiary of a Chinese company. I went to the company website to see what I could learn about them.

The website says that “NanTong WiFi Network Technology Co.,Ltd is one of the largest and professional Internet consultant for oversea companies, which authorized by ShangHai Industry and Commerce Bureau and China government.” While there are lots of official looking logos on the site, they are just links to organizations like ICANN, not endorsements. WF.Network’s web address, www.domainnamesasia.com is suspiciously similar to www.domainnameasia.com, owned by BrightDomain, a legitimate web hosting and domain name registrar. But unlike BrightDomain, there is no way to register online, the standard way to do business with a registrar.

I e-mailed Tina inquiring if her company was certified by ICANN. She answered, “Yes, our company an ICANN authorized registrar.” ICAAN lists approved registrars, but you won’t be surprised to learn that NanTong WiFi Network isn’t on it.

My last exchange with Tina involved payment for the suggested “registrations”, which total $290 for a year. Here’s what she wrote: “For security reasons we only accept wire transfers.” Security for whom? Certainly not for the customer. Once you wire money to someone’s bank account, there’s no recourse.

By now you undoubtedly get the picture. This is a sophisticated ploy to scare businesses into forking over money for Internet real estate they may not need. But it got me thinking: How many domain suffixes does a business need? Between the 21 generic top-level domains, like .com, .net, and .biz  and the 240 national top-level domains like .ca, .mx, and .de, a business could go broke.

A company like Google owns dozens of domains, like google.jp and google.in. Likewise Microsoft, Apple, Nokia and the many multinationals that do global business. If you visit these sites, you’ll see that the content is  localized for the language and culture of the country and in many cases, offers different products and pricing.  But even multinationals don’t own all the various combinations.  Why? Because it’s not necessary.

According to Inc. magazine, “Don’ t think you’ re going to be able to own mcdonalds.biz or nike.info. Even if you somehow manage to register a trademarked name, unless you can show a legitimate claim for such a domain, the trademark holder can keep you from using it.”

When you register a domain name, you agree that it “will not infringe upon or otherwise violate the rights of any third party.” You must also agree to participate in arbitration if someone files a claim under ICANN’s Dispute Resolution Policy.

The bottom line is that if you hold a trademark or service mark and someone else is using it, you can file a dispute to have it yanked from the registrant. Even if your name isn’t trademarked, you may have legitimate grounds to reclaim it if the registrant is using it in bad faith. Sometimes just the filing of a dispute claim is enough to have the offending party surrender the domain name.

That’s exactly what I plan to do if John Wang—if he exists–uses the Learn the Net trademark. Spending the $290 may be cheaper than filing a claim, but who wants to be exploited in such a clumsy manner. If you’ve been contacted by NanTong WiFi Network or encountered similar scams, share your story. As the saying goes, “Sunlight is the best disinfectant.”