914-908-6757 anthony@vernalaw.com

Let’s define the situation:

You’ve registered your domain name.  You have your website going.

Then you receive an e-mail similar to this:

(It’s very urgent, please transfer this email to your CEO. Thanks)

We are the domain registration and solution center in China. On April 10, 2017, we received an application from Baopu Ltd requested “xxxxxx” as their internet keyword and China (CN) domain names (xxxxxxx.cn, xxxxxxx.com.cn, xxxxxxx.net.cn, xxxxxxx.org.cn). But after checking it, we find this name conflict with your company name or trademark. In order to deal with this matter better, it’s necessary to send email to you and confirm whether this company is your distributor in China?”

Many people ask if this e-mail is necessary.  Many people ask if this e-mail is a scam.

It’s hard to tell if it’s a scam.  However, it’s certainly not necessary.

If you are doing business in China and want a .CN domain, do remember that the China government will monitor what content is on the .CN website. Also remember that there are prohibitions on the names of .CN domains.  Violating rights of third parties, names against moral, ethnic and government standards, and any other names contrary to to the laws of China are prohibited.

In the case that your business does not reach into China and another company is registering domain names with your business’ trademarks, this is a good reminder to register the trademarks of your company.

Why register?  Because in order to recover a domain name that would infringe a business’ trademark, the case must be brought in arbitration (usually housed by the World Intellectual Property Organization) under the Uniform Domain Name Resolution Policy (UDRP). 

UDRP Paragraph 4 states that “You are required to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that (i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights….”

If the complainant in a UDRP proceeding owns a trademark registration, then the complainant generally satisfies the threshold requirement of having trademark rights.

In certain, highly limited circumstances, some panels have opted to examine the circumstances of trademark registration in considering whether the registration satisfies UDRP requirements. In such cases, panels have typically found trademark registrations that are automatic or unexamined (such as US state registrations as opposed to US federal registrations) are not owed the same deference under the UDRP as examined registrations. In certain cases some panels have declined to consider trademark registrations listed solely on a supplemental register, at least where the validity of or deference due to such listed mark under applicable national law (i.e., the law applicable to the concerned register) is in genuine doubt.

So, if the e-mail from China is to believed, there will be a bad faith registration of .CN domains in China, just remember that you may not need to register domains in China.  There is another way to find a solution to this problem – you may file a domain name proceeding if your trademarks are registered in the United States.