Have you received an email from an Asian Internet domain registrar or IP service company that warns some third party is trying to register a domain name or search keyword the same as or very similar to your company name, brand name or trademark? The email may claim that a third party is applying for this domain name, but under a different domain suffix (e.g. .asia, .cc, .cn, .com.cn, .hk, etc. — each a top level domain1)?
These email solicitations usually originate from an Internet or IP service company in Asia (most commonly in Hong Kong or mainland China). The registrar invariably claims it is contacting you because it has noticed that one of its customers is attempting to register a domain containing your intellectual property and that it wishes to do the right thing by giving you an opportunity to register the domain name before it is taken by the third party applicant. As you might suspect, the reported third party applicants almost never exist, but many of the registrars are in fact empowered by ICANN2 to register new domain names under the .asia domain or one of the national domains of the countries in Asia (e.g. .cc, .cn, .com.cn, .hk).
While registrars have been sending this type of email solicitation for some time, we have seen a recent increase in frequency. The newer emails are more likely to offer keyword services in addition to domain name registration services. An Internet keyword is generally a short memorable address that redirects a user to a website — in other words, a shortcut route to the site linked to the keyword. For example, if the owner of a website located at www.XYZ.com.cn has registered XYZ as a Chinese Internet keyword, Chinese computer users with the appropriate browser software can visit the site by entering just the keyword XYZ into the address window of their Internet browser.
Domain names and keywords are generally registered to applicants on a first-come, first-served basis. A registrar is under no obligation to search for conflicts or even to alert another party known to hold a mark similar to the domain name or keyword sought in the application.
Why are these Emails Sent?
So why do these registrars, if legitimate, reach out to you? Why don’t they simply allow their existing customer to register the domain name without bothering to contact you? The reported third party applicants don’t exist, as these domain name registrars would fulfill an order to register the domain without question. Instead, the domain registrar is seeking to scam you into purchasing a domain name or keyword you would not otherwise purchase to keep a non-existent third party from controlling the Internet presence for your company name, brand name or trademark. While many registrars that send these emails may legitimately be able to provide the registration services (either directly or indirectly), the fact remains that you are not contacting them to request these services. So, the emails attempt to “scare” up business through a threat of loss of control of the mark to some third party.
What to Do
If your business plans do not include an Internet presence in Asia in the near future, generally no action will be required to deal with these domain name solicitations. With over 250 top level domain names, it is generally not practical to register every permutation of a trademark as a domain name and it is generally advisable to focus on registration of variations which are likely to be used by your customers and business partners when they are attempting to locate your website.
If, however, your products or services are being sold in Asia or your business plans include expanding your Internet presence to Asia (often done where you have a reputation or business activity in Asia) or if your trademark has global recognition, the warning email may be a wakeup call. In that case, we generally recommend you obtain the desired domain name or keyword through a more ethical registrar, and perhaps at a cheaper rate. You also may wish to consider registering your trademark rights in the relevant jurisdictions to protect against cybersquatting and other forms of intellectual property infringement.
Also, we can discuss with you a strategy for registering many variations of domain names and keywords to block pirates and imitators from causing scams and frauds that will be falsely identified with your company. Further, you may wish to obtain the equivalent domain name or keyword in the local language and the local language characters or alphabet. Historically, domain names and search keywords were limited to ASCII3 characters, but are now available in many languages, including Mandarin Chinese. Domain names that contain non-ASCII characters are known as internationalized domain names, or IDNs. For example, as of July 2010, traditional and simplified domain names (e.g. “. ” (.cn)) passed the ICANN evaluation and are available for registration.