Archives: domain names

We wrote on China domain name scams last year, but since we are seeing an increase in these from our clients and readers, we are going to write on it again.  Just about everyone doing business in China or doing business with China gets or will get one or more of the following:

1.  Preventing someone in China from registering your domain name;

2. Registering your domain name in China, “just in time” to prevent someone from beating you to it;

3.  Making sure that your domain name registration in China does not expire.

DO NOT RESPOND.

Near as we can tell, every single one of these that we have seen (and we have seen at least one hundred of these (because clients and readers are always sending them to us to review) are a scam. Number 3 above may not be a scam if you actually have a Chinese domain name, but if you do not, it is.

You also may get emails from someone claiming to have already registered some iteration of your company name (or one of your product names) and seeking to sell it to you. For example, if your company is called “xyz” and you already own the xyz.com domain name, your email may come from someone who has purchased and now wants to sell you the xyz.cn domain.

STRATFOR did a China Security Memo on how these emails would increase when ICANN ( Corporation for Assigned Names and Number) started accepting applications for domain names with non-Latin characters (i.e., Chinese) and that appears to have been the case now that ICANN has done that.

So what should you do when you receive an email offering to protect you from “others” who are seeking to register a Chinese translation or variant of your name or product or someone seeking to sell you an already registered translation or variant.

First off, as soon as possible, register whatever domains you need to protect your company or brand. Determine now what domain names you care about so you do not need to make this determination with a gun to your head. Right now is the time to think about Chinese character domain names.

Secondly, if someone has already actually registered a domain name that is important to you and they are now offering to sell it to you, you essentially have three choices. One, let the domain name go. Two, buy it from the company that “took” it from you. Or three, pursue legal action against the company that took it from you.

Preemption by registration is your best and least expensive protection. In other words, if you do not want someone taking your company name or one of your product names (or some variant of these) and using them for a domain name, register those as domain names right now. You should also figure out whether it makes sense for you to register your trademark in China or wherever else you do business.

What are you seeing out there?

Trademark infringement with respect to domain names is a very common problem, particularly for those who do business with China or even just manufacture their product there. It is unsurprising that many in China are quick to register domain names similar to those of the foreign companies they see.

We frequently see the following sorts of domain name thefts, oftentimes by Chinese companies seeking to hone in on a well-known brand name:

  • Domain names that intentionally contain a common typo of a known trademark.
  • Domain names that take a known trademark and attach a generic word like “outlet” or a word descriptive of the product, such as “shoes.”
  • Domain names that are exactly the same as a known trademark’s domain name, but with a different extension.  For example, abc.net, instead of abc.com.

Companies confronted with domain name theft oftentimes do not realize how relatively easy it can be to put a stop to it, even when it is a Chinese company that is using the name. The Internet Corporation for Assigned Names and Numbers (“ICANN”) developed The Uniform Domain Name Resolution Policy (“UDRP”) to resolve domain name disputes, and international arbitration of disputes under UDRP is administered by a list of ICANN approved dispute resolution service providers.

Anyone who registers a domain name is agreeing to the registrar’s terms and conditions, including making a commitment to be bound by the UDRP.  The UDRP’s purpose is to prevent cybersquatting, which is defined “as registering, trafficking in, or using, a domain name with bad faith intent to profit from the goodwill of atrademark belonging to someone else.”  Tenneco Automotive Operating Company Inc. v. Naushad Dhukka / SoftDot Technologies, LLC,NAF, FA1104001384326 (May 31, 2011).

When a complainant demonstrates that another party is using a domain name in “bad faith,” the UDRP will either transfer or cancel the offending domain name at the request of the complainant.  We almost always recommend that the domain name be transferred to our clients so nobody else can grab it at some later date and force our client to go through the same UDRP domain name arbitration again.

Companies need to be proactive in locating and excising “bad faith” websites as soon as they are discovered because those offending sites can not only damage a company’s online presence, they infringe upon and can ultimately dilute legitimate trademark rights.