Chinese Domain Name Registrars have been sending e-mails and letters to U.S. companies, urging them to register domain names that include the companies' trademarks. The messages are usually in the format of the following:
We are China Internet Registration Company, which is the domain name register center in China. We have something we have to confirm with you, we have received an application from one company named X, and X Company is applying for the following:
YOURMARK.COM.CN; YOURMARK.CN; YOURMARK.TW; YOURMARK.ASIA; YOURMARK.HK.
We need to know the opinion of your company, because the domain names and keywords may relate to your company's brand name on the Internet. Please let someone in your company who is responsible for trademark or intellectual property rights contact us. If there is any question, please contact us as soon as possible.
China Internet Registration Company"
These messages are bogus. These Chinese Registrars exaggerate the urgency in order to force the companies to register these domain names in a panicked fashion. The fees for these registrars tend to be much higher than standard prices. Dishonest registrars can sometimes add fraudulent clauses such as long-term registrations and subscriptions to complementary services.
We recommend that businesses review their trademark protection in China for their important brands, and that they consider filing for domain names in China through an accredited domain name registrar.
Protecting Trademarks in China
A trademark generally has no protection in China unless it is registered with the Chinese Trademark Office. For any company with a presence in China, including a business simply manufacturing goods there for export, registration is highly recommended. Applications for registration should be made for all key brand names, in both English and the Chinese translation or transliterations and logos.
Even if a company does not have any presence in China, it should consider filing trademark applications for defensive purposes. Enterprising individuals often check the U.S. registry to see if marks are on file in China, and if they are not, the individuals "hijack" them. So, unless the China market will never be important to a business, relevant trademark applications should be filed.
Protecting Domain Names in China
Registration of domain names in China is another important way to protect trademarks. In addition to registering key trademarks in China, it is also important to register domain names in Chinese top level domains, such as .com.cn, and .cn.
A business needs to consider the policies that it wants to establish with regard to domain names. One can take an offensive approach and register all or many possible variations of the trademarks as domain names. Another approach is to register only the important marks in the top level domain names and see if the third-parties register domain names that may infringe on registered trademarks. Domain names are cheap and easy to register, but they are difficult and often expensive to retrieve once they are registered by third-parties.
Registering Domain Names in China
Domain names in China can include Chinese characters, and there is a list of accredited Chinese Domain Name (CDN) registrars approved by the China Internet Network Information Center (CNNIC) on its website at http://www.cnnic.net.cn/en/index/0L/index.htm.
Domain Name Dispute Resolution in China
The CNNIC Domain Name Dispute Resolution Policy and the Rules for CNNIC Domain Name Dispute Resolution Policy are modeled after the Uniform Domain Name Dispute Resolution Policy (UDRP) and Rules for Uniform Domain Name Dispute Resolution we follow in non-country specific top-level domains. There are two dispute resolution institutions that handle domain name disputes: China International Economic and Trade Arbitration Commission (CIETAC) and Hong Kong International Arbitration Centre (HKIAC). Each dispute resolution institution also has its own supplemental rules similar to WIPO and the National Arbitration Forum.
Similar to the UDRP, to begin an action, the trademark owner files a complaint according to the rules with one of the dispute resolution institutions, and a panel of experts will be appointed to resolve the dispute. The CNNIC Domain Name Dispute Resolution Policy, Rules for CNNIC Domain Name Dispute Resolution Policy and supplemental rules for the two dispute resolution institutions are available at http://www.cnnic.net.cn/en/index/0P/index.htm.