You might have a domain name or a pending or registered trademark with the US Patent and Trademark Office. If so, you may be a potential recipient of unsolicited e-mails from alleged Chinese domain name registrar and dispute resolution providers.
Typically, the e-mail states that another company is attempting to register a domain name or an Internet keyword which is identical or substantially similar to the client’s trademark. Those who respond to such solicitations receive a communication from the registrar with very exorbitant prices for domain name registration.
1. Why are these e-mails considered "scams"?
- As with all domain name registrars, anyone may secure a domain name as soon as it is available. See <http://www.cnnic.net.cn/html/Dir/2007/06/04/4628.htm> (last accessed January 15, 2009).
- Dispute resolution occurs after a domain name has been registered, not before.
- Domain names are relatively inexpensive, including Chinese domain names (e.g., .cn, .com.cn, etc.).
- There are currently only two accredited Chinese domain name dispute resolution providers, China International Economic and Trade Arbitration Center and Hong Kong International Arbitration Center.
2. What should I do if I receive a suspicious e-mail from an alleged domain name registrar and dispute resolution provider?
· If the e-mail states that a company wants to register a domain name that is identical or similar to your trademark, then ignore it — it is spam. As stated above, domain name disputes occur after registration, but not before. Domain names are secured on a first come, first served basis.
· Additional steps you can take:
o Check to see if the Chinese domain name firm is accredited by the Chinese Internet Network Information Center ("CNNIC").
§ A listing of accredited CNNIC domain name registrars and dispute resolution providers is available at <http://www.cnnic.net.cn/html/Dir/2006/02/14/4008.htm> (last accessed January 15, 2009).
o Educate yourself about the Chinese domain name registration and dispute resolution process. See <http://www.cnnic.net.cn/html/Dir/2005/10/11/3218.htm >, <http://www.cnnic.net.cn/html/Dir/2005/03/24/2861.htm> (last accessed January 15, 2009).
o Search the Internet to see if others have received similar e-mails and also search to make sure that your trademark is actually not being misused.
3. Should I register a Chinese domain name?
· If your company has a presence in China, registration of a Chinese domain name is recommended.
o However, a trademark search is recommended to help ensure that the domain name(s) which your company wants to apply for does not infringe or otherwise conflict with an existing trademark.
· The domain name registrar should be accredited by CNNIC.
Conclusion
E-mails which state that someone is trying to register a domain name that is similar to your trademark should be ignored as spam. Domain names may be registered as soon as they become available and there is no "opposition" process. Additionally, the only accredited domain name dispute resolution providers in China are the China International Economic and Trade Arbitration Center and the Hong Kong International Arbitration Center.
If you have any questions, concerns or comments, please contact Ralph F. Manning, Esquire at 412.594.5540 or rmanning@tuckerlaw.com or Lee Kim, Esquire at 412.594.3915 or lkim@tuckerlaw.com of the Tucker Arensberg, P.C. Intellectual Property and Technology Law Group.
