Recently, one of our clients received an email from Chinese domain registration company stating a foreign company was attempting to obtain their domain name. Our client, for purposes of privacy we’ll call them “CustomerName,” is a start-up in the process of obtaining a trademark registration for their company name. This email, although suspiciously spam-like, created some concern and confusion for CustomerName. Was this spam? What rights would they have if a foreign company was to use this domain name? What is my recourse?
First things first, it’s important to determine whether something like this is just a “Nigerian Prince” scam or something legitimate. A quick search turned up an article on the domain registration email our client received giving us serious pause. The article, by Happy Living with Hosea, provides a great analysis of the drafting of the email. Hosea pointed out things a Chinese company would have likely done differently if this was a legitimate operation. First, it was evident something peculiar was up based on the grammar and punctuation of the email. I’ll be the first to admit I send out letters with grammatical and punctuation errors on a daily basis. However, this one bereel bad! So I feel “it is our duty to notice you” (a little example) of how this poor drafting is a good indicator of a scam. Additionally, had this been one carelessly drafted email that would be one thing, but after some research, it becomes clear this is not an isolated case (just read the comments to the Hosea article).
However, with any scam these crafty “artists” will adapt and mutate this approach and at some point you can be sure they will succeed in passing this first grammar test. The next item to consider, when dealing with a questionable domain registration request, is the procedures and literature of the company regarding the registration. This pre-registration option is common. A similar letter was sent out for the .co internet launch. As I wrote in a previous article, Cointernet, provided a period of time where specific trademark holders were provided a time period to secure their .co domain names. However, in this case, Cointernet provided rules and regulations on the process. This email and website listed nothing of the sort. This would be a red flag as well.
So what if this email was real? What options would you have to protect your name? If you have a United States Trademark, you are reasonably secure. The holder of a federal trademark is afforded protection when the mark is used in connection with a particular good or service. Therefore, if your software company name is "AwesomeSoftware" and your website is the same, then the no matter who owns the website "AwesomeSoftware.com" they can not advertise software under that name (at least within the jurisdiction of the United States). Alternatively, if a company advertises and provides goods or services in connection with your trademark, but only in China, you won’t have much recourse. If the foreign company does establish a presence in the United States, you must prove infringement of your trademark. You would need to show you had a prior use of the trademark (which is easy if you have a federally registered mark), there was a commercial use of your mark, and a likelihood of confusion. If infringement is difficult to prove, cybersquating claims could be available, but would depend on the foreign entity’s use of the mark. Was the use legitimate or intended to only keep another from obtain that site (the depth of cybersquatting should be reserved for another topic).
One must be aggressive in protecting your intellectual property, so researching these topics and checking with your attorney are highly advised. Be aware of scams similar to this one, as they will be sure to change. For reference, here is the letter sent to our client:
We are a Network Service Company which is the domain name registration center in Shanghai, China. On July,7th,2010, We received HUATAI Company's application that they are registering the name "Customer Name" as their Internet Trademark and "CustomerName.cn", "CustomerName.com.cn" ,"CustomerName.asia"domain names etc.,It is 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 I am 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. Thank you!
Registration Department Manager
3002, Nanhai Building 854.Nandan Road
Xuhui District, Shanghai
Office: +86 216296 2950
Fax: +86 216296 1557