Beware of domain name scare tactics

Has your business been on the receiving end of a communication from a purported domain registrar advising you that someone else is attempting to register domain names or internet key words which incorporate the name of your company or your trade mark? In this article senior associate Colleen Cavanagh outlines the appropriate response to such notices.

These types of notices, particularly out of China, are becoming increasingly common. They are usually an attempt by an organisation or person pretending to be a legitimate domain name registrar to drum up business.

Usually the notice will state that a third party has applied to register certain domain names or internet key words incorporating your trade mark or company name. It will invite you to contact the registrar to register your domain name promptly to prevent the other party from obtaining registration.

By way of background all .cn domain names and internet key words in China are administered by a quasi-governmental body called China Internet Network Information Centre and can only be registered via a registrar accredited by this organisation. Chinese law states that a domain name or internet key word registrar is supposed to register domain names and internet key words on a first come, first served basis.

So what should you do if you receive one of these notices? The answer is "probably nothing". Certainly no response to the bogus registrar is required. However, you should take the opportunity to review whether you need to protect your name or trade mark by registering appropriate domain names and/or internet key words through reputable accredited registrars. You may elect to do this for marketing purposes or even for defensive purposes. Clearly registration will be very important if you plan to do business in China where the bulk of these notices appear to originate from. The registration of your desired domain name by someone else will be frustrating and disruptive of your marketing plans. It will cost much less to take proactive steps to register your domain names now, than it will to sort out the aftermath if someone acquires registration first.

The question is how far do you go with registration? There is a proliferation of ways in which you can register domain names with different country codes and extensions, and clearly a cost benefit analysis is required to determine how far to go. The registration of an internet key word, which enables internet browsers to be directed to your website, may be an attractive option but requirements will vary from business to business.

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For more information on any of the cases, articles and features in Commercial Quarterly, please email Diane Graham or call her on 64 9 916 8849.