Electronic Media Network Limited (M-net) has successfully defended against an objection from Verisign to M-net’s application for the .mnet generic top-level domain (gTLD).
The .mnet domain was among 16 gTLDs that Verisign, a large American Internet company that operates both the .com and .net domains, took issue with.
Verisign followed the same approach with each of its objections, Naspers chief intellectual property officer Craig Opperman told MyBroadband. Each took a very aggressive position with a detailed supporting expert opinion from a linguistic professor.
According to Opperman, Verisign then proposed “unpalatable” terms to settle and withdraw their opposition.
Faced with tight deadlines, M-net asked for a stay in the ruling on the matter. Local lawyers felt that something was better than an outright loss of the domain, but M-Net decided to look at the business perspective.
M-net decided it could not accept Verisign’s proposed settlement agreement and that they would have to fight the matter, Opperman said.
“When dealing with US companies in matters like these it’s important to remember US litigation culture,” said Opperman. “In the US people sue one another for just about anything.”
Opperman, a South African and US lawyer who practised in Silicon Valley for 21 years before joining Naspers in July 2013, said that this attitude pervades through the big American companies.
“They see going to court as part of their business arsenal,” Opperman said.
There’s a lesson for SA companies, Opperman believes. “Just because a big US company is trying to strong-arm an unpalatable agreement on you using litigation, that does not mean you have to accept it.”
International lawyers, local experts
To respond to Verisign’s dispute, M-net enlisted the help of American law firm, Patton Boggs, and local subject matter expert Arthur Goldstuck, MD of World Wide Worx.
In his response to Verisign’s objection and the expert opinions filed with their opposition, Goldstuck argued that the .mnet domain would not be confused .net in South Africa for a number of reasons.
Goldstuck explained that on an elementary level, .net (“dot net”) and .mnet (“dot em net”) would be pronounced very differently.
To assuage fears that users might accidentally type “.mnet” instead of “.net”, Goldstuck said that his research shows that it is incredibly rare for users to mistakenly type 4 letters instead of 3 when navigating to a URL.
He also said that “it is readily apparent” that M-net is a prominent and respected brand; a stark contrast to the type of companies who would “squat” on domains such as “googlr.net” to mislead consumers.
Another consideration, Goldstuck said, is that the number of .net domains registered in South Africa are insignificant compared to the number of .com and .co.za domains.
The counter-arguments mounted by M-net were successful and Verisign lost its objection to the .mnet gTLD application.
At the time, 14 of Verisign’s 16 objections had been considered and including the .mnet case, had lost 12 of them, Opperman said.
He said that M-net’s success showed that SA companies can and should stand up to what looks like very aggressive behaviour. “There are litigation-based ‘cultural norms’ in the US that SA companies should be aware of.”
South African companies doing business in the US should realise that they may have to “grow some sharp elbows and wade in,” Opperman said