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How to protect your business from fake trademark infringement and “domain slamming” scams

What the fine print actually says is that by paying the fee, you have authorized the transfer of your domain away from your current registrar

At least once a week, I get an email from a friend, associate or fellow business owner asking me whether the email they just received is legitimate. Mainly originating in China, this scam involves sending domain owners an email claiming that another company has just attempted to register a number of domains that contain the targeted company’s trademarks.

You’ve likely seen this email:

Dear Manager, (If you are not the person who is in charge of this, please forward this to your CEO, Thanks) This email is from China domain name registration center, which mainly deal with the domain name registration and dispute internationally in China and Asia. On Oct 29th 2012, We received *** Ltd.’s application that they are registering the name “********” as their Internet Keyword and “********.cn”, “********.com.cn “, “********.asia” domain names, etc.., they are China and ASIA domain names. But after auditing we found the brand name been used by your company. As the domain name registrar in China, it is our duty to notice you, so we are sending you this email to check. According to the principle in China, your company is the owner of the trademark. In our auditing time we can keep the domain names safe for you firstly, but our audit period is limited, if you object the third party application these domain names and need to protect the brand in China and Asia by yourself, please let the responsible officer contact us as soon as possible. Best Regards,

The email is typically signed the registration department or auditing officer or some official sounding title.

Another similar scam has been so prevalent that it even has a name “Domain Slamming.” Domain slamming is a practice where a domain registrar or reseller sends a transfer notice masquerading as a renewal notice to trick customers of another registrar into switching away. Some of these notices come by email but many come in brown envelopes with the Canadian maple leaf logo and a name that looks like the official domain registry, but it is actually a private company. The notices look like a government-issued invoice so people assume that it is real. What the fine print actually says is that by paying the fee, you have authorized the transfer of your domain away from your current registrar.

How to protect yourself

Below are some key questions you need to ask when you receive these types of notices.

Do you recognize the sender, and is this a legitimate company? If you have not dealt with the company before, then most likely the notice you have received is a marketing ploy or scam to entice you into buying domain names through them. Run a search on the company. (Don’t click on the links in their email.) Read up on the company or determine if it even exists.

Even if the company looks legitimate, what is its reputation? It is always a good idea to run a Better Business Bureau (BBB) search when dealing with any company you are not familiar with. Having the BBB logo on a website or marketing materials does not mean the business is necessarily in good standing. Look at the company’s past complaints record and whether it has an “A+” versus an “F” rating. Some companies might even have an alert against them posted on the company’s BBB page. Google the company name and see if others have posted warnings. In some cases, there may have been action taken by the Competition Bureau of Canada. Never send money or sign anything until you are sure who you are dealing with.

Who is the registrar of record for your existing domains? If you receive a domain renewal notice, be sure that it is coming from the registrar of record for that domain name. All registrations are handled by registrars and your registrar of record is who you initially registered your domain with. You can check your domains at www.webnames.ca/whois.asp or call your registrar.

What is the likelihood of someone infringing on your brand and what are the consequences? If you have a trademark, you have to defend it. For the price of a domain, my advice is to cover off at least the major extensions. Read my previous article on this topic at biv.com (under Cybele Negris in the Columns section). Register your domains with a registrar with a good reputation for service and integrity.

If someone is infringing on your trademark you can submit a domain dispute through ICANN’s Uniform Domain Name Dispute Resolution Policy www.icann.org/en/help/dndr/udrp – or, for .ca domains, CIRA’s Domain Name Dispute Resolution Policy www.cira.ca/legal/cdrp/.

How to stop these notices from being sent? Subscribe to a domain privacy service, which protects you from spam, telemarketers and identity and domain theft. Think of this service as an unlisted telephone number through your telephone company. If you register a .ca as an individual, your contact information is already private by default. If you register .ca as a business or if you register other domain extensions, you will need to buy a separate privacy service through your registrar.

Report the problems. If you feel like you have been a victim of deceptive practices or a scam, report the issue.

•Competition Bureau of Canada - www.competitionbureau.gc.ca

•Better Business Bureau - www.bbb.org/canada/business-complaints/

•Canadian Anti-Fraud Centre - www.antifraudcentre-centreantifraude.ca

The main point to remember when receiving any communication is to read it fully and carefully and always deal with companies you trust. •

Cybele Negris ([email protected]) is the president and co-founder of Webnames.ca, Canada’s original .ca registrar. She serves on the boards of Small Business BC, Small Business Roundtable of BC and the Forum for Women Entrepreneurs.