Yesterday, in How To Stop China-Based Domain Name Theft, we talked about what to do if someone from China (or pretty much anywhere else, for that matter) has stolen your domain name:
Companies confronted with domain name theft oftentimes do not realize how relatively easy it can be to put a stop to it, even when it is a Chinese company using the name. The Internet Corporation for Assigned Names and Numbers (“ICANN”) developed The Uniform Domain Name Resolution Policy (“UDRP”) to resolve domain name disputes, and international arbitration of disputes under UDRP is administered by a list of ICANN approved dispute resolution service providers.
Today, we are doing a quasi-followup to that post by discussing what to do when you receive an email out of the blue from a purported Chinese law firm telling you that someone in China has applied for your domain name or trademark in China.
Interestingly enough, I am writing today’s post on China domain name letters not because we did a post yesterday on China domain name theft, but because a client wrote me after receiving such an email.
First, a bit of background. We were working with a company that had been threatened with a lawsuit by Sinosure, China’s government-owned import-export insurance company. For a long explanation on what to do when Sinosure knocks on your door (or, more accurately, seeks to blow your house down), I urge you to read Sinosure: It’s Back and It Wants Your First Born.
One of the first things we do when our law firm is representing someone pursued by Sinosure is to make sure our client is not exposed to Sinosure in China. Among other things, that involves our China IP attorneys making sure that our client does not have any trademarks or domain names in China that Sinosure might seize and making sure that it is not using any of its brand names in China, including having any of its branded products manufactured there without adequate China trademark protection. We do this for reasons we noted in China Trademark Law: Simple and Effective 13 Years Later:
The fact that you are manufacturing your product in China just for export does not in any way minimize the need for you to protect your trademark. Under China trademark law, once someone registers “your” trademark in China, they have the power to stop your goods at the border and prevent them from leaving China.
In this Sinosure case, we explained all of the above to our client and then we (the client and our China IP lawyers) determined it would make sense to immediately apply for two China trademarks for our client (but not on behalf of any company or person Sinosure might recognize) and we did that.
But in the meantime, our client received both what our China lawyers call the China domain name scam and the China trademark scam. The domain scam emails usually look something like the following and they are almost invariably complete fakes and should be ignored:
We are China’s internet domain services company and last week, we received an application from a Chinese company that has requested “[NAME OF YOUR COMPANY”] as their internet name and China (CN) domain name. But after checking into it, we learned that this name conflicts with your company name or trademark. In order to deal with this matter better, we send this email to you to confirm whether this company is your distributor or business partner in China and to confirm that you authorized this domain registration. Please respond soonest.
Or something like this one, which years ago went to an international attorney friend of mine who sought our advice on behalf of one of her clients:
This is about the registration of your company name “______________.” Please forward it to your company’s leader. Thanks!
Dear Sir or Madam,
I am grateful for you checking this letter out. We are a Chinese domain registrar. Recently, we received the registration request from “__________ Technology Ltd” applying to register __________ brand and domain names(cn hk etc), which have same main body as your company’s name. We send this letter to confirm with your company whether or not you authorize them to register those names. Please give me your thoughts ASAP so as to let us carry on, Thanks.
We first wrote about this scam way back in 2009, in China Domain Name Scams. Just Move Along, [link no longer exists] with this to say:
If your company has done anything in China (even just sending someone there to meet with a supplier), you have probably received a somewhat official email offering, at a steep price, to “help” you stop someone from taking your domain name.
DO NOT RESPOND.
Near as I can tell, every single one of these that I have seen (and I have seen at least fifty of them because clients are always sending them to me) are a scam.
You also may get emails from someone claiming to have already registered some iteration of your company name (or one of your product names) and seeking to sell it to you. For example, if your company is called “xyz” and you already own the xyz.com domain name, your email may come from someone who has purchased and now wants to sell you the xyz.cn domain.
What to do?
First off, as soon as possible, register whatever domains are necessary to protect yourself. Determine now what domain names you care about so you do not need to make this determination with a gun to your head. Right now is the time to think about Chinese character domain names.
Secondly, if someone has taken a domain name that is important to you and they are now offering to sell it to you, you essentially have three choices. One, let the domain name go. Two, buy it from the company that “took” it from you. And, three, pursue legal action against the company that took it from you.
Preemption by registration is your best and least expensive protection.
Nothing has changed since then, except a massive increase in such emails. If you get one of these, you should also ask yourself whether you even care that someone is registering your domain name in China. And if you do, you should then determine whether you have a China trademark that would stop it? And if you care about China, are there other countries where you should be registering your domain name also?
After calming down a bit and analyzing the situation, our client determined (rightly) that its domain name was already sufficiently protected and if someone really had gone off and tried to register anything improperly related to their domain name, they would take appropriate action once that became clear.
But, as mentioned above, our client also received a China trademark scam letter in addition to the domain scam letter. In China Trademark Emails, Squatters, and IP Law Firms, we extensively discussed these sorts of emails and we set forth a typical such email:
Dear [owner of US trademark]:
According to our trademark research team, the following mark has been published in the Chinese Trademark Gazette on [date]. We note that this mark is identical to a registration owned by your company.
[details of allegedly published mark]
The Chinese Trademark Office has already completed its examination of this mark and the mark is now open to opposition until [deadline]. The deadline is not extendable. If no one files an opposition before the deadline, the mark will proceed to registration.
Please let us know if we can be of assistance in opposing this mark.
[name of Chinese IP firm]
The email our client received was pretty similar. And just as is true with the domain name scam emails (even more so!), the first thing you should do when you get this sort of email is NOT RESPOND TO IT. Then call your China IP lawyer. But back to the not responding part, because that is crucial. The reason you should not respond to one of these emails because if you do respond the first thing the sender of that email will almost certainly do is go off and apply for your brand name as its own trademark. This is because these scammers send out thousands of these domain scam emails and their best way to make money with them is for you to pay them to stop the company that seeks to secure your brand name as its own China trademark.
But hear me out here. Because these scammers send out thousands of these emails, they virtually never go off and apply for the trademarks related to the email recipients that do not respond to their initial email? They simply move on because it does not make economic sense to spend the time and the money securing the China trademark of a company that does not care enough about that trademark to respond to an email warning them that they are about to lose it. But it does make economic sense to secure the China trademark of those companies that do respond to their emails. So in other words, if you respond you are greatly increasing the odds of your having China trademark troubles and if you do not respond, you are greatly decreasing those chances.
In our client’s case, we were confident enough that we had already done all we could to protect its China trademarks that there was nothing else for anyone to do. But if you receive such an email and your company has not adequately protected its brand names and logos in China with a China trademark, you should use the China trademark scam email you just received as a wake up call to make sure your China trademark house is in order.
But above all else, be careful out there.
