How To Stop China-Based Domain Name Theft

Domain Name Trademark Infringement

The integrity of a brand’s identity is paramount. Unfortunately, the rise of digital commerce has generated new forms of intellectual property challenges, notably domain name trademark infringement. This issue is especially prevalent for companies interacting with or manufacturing in markets such as China, where rapid registration of similar domain names by local entities is common.

This practice not only poses a significant risk to brand integrity, but it also complicates international business operations. In this post, I will explain the current situation and provide pointers on how to protect your brand.

Common Types of Domain Name Thefts

We frequently see the following sorts of domain name thefts, oftentimes by Chinese companies seeking to home in on a well-known brand name:

  • Domain names that intentionally contain a common typo of a known trademark.
  • Domain names that take a known trademark and attach a generic word like “outlet” or a word descriptive of the product, such as “shoes.”
  • Domain names that are exactly the same as a known trademark’s domain name, but with a different extension.  For example,, instead of

The UDRP’s Legal Framework for Resolving Domain Name Disputes

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.

To succeed under the UDRP, a complainant typically must prove the following three factors:

  • The domain name is identical or confusingly similar to a trademark in which the complainant has rights. This analysis considers factors like the similarity of the names, the strength of the trademark (think well-known brands versus generic terms), and the intended use of the domain name. For instance, a lesser-known trademark might require a higher degree of similarity to be considered confusing.

  • The registrant has no legitimate interest in the domain name. This means the registrant has no connection to the trademark owner or a legitimate reason for using the domain name, such as having a business with a similar but non-infringing name.

  • The domain name was registered and is being used in bad faith. This includes registering the domain name to sell it to the trademark owner for a profit (cybersquatting) or diverting customers from the trademark owner’s website by creating a confusingly similar online presence.

Understanding the UDRP Agreement

Anyone who registers a domain name is agreeing to the registrar’s terms and conditions, including making a commitment to be bound by the UDRP. The UDRP’s purpose is to prevent cybersquatting, which is defined “as registering, trafficking in, or using, a domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else.”  Tenneco Automotive Operating Company Inc. v. Naushad Dhukka/SoftDot Technologies  (May 31, 2011).

The Role of the UDRP in Protecting Brands

When a complainant demonstrates that another party is using a domain name in “bad faith,” the UDRP will either transfer or cancel the offending domain name at the request of the complainant. We almost always recommend that the domain name be transferred to our clients so nobody else can grab it at some later date and force our client to go through the same UDRP domain name arbitration again.

The UDRP is a popular and efficient option for resolving domain name disputes. However, it’s not the only option, and in many instances one of the following may make better sense for your company.

  • Alternative Dispute Resolution (ADR): Parties can choose mediation or arbitration through a neutral third party to resolve the dispute. This can be faster and more flexible than the UDRP, and it is not uncommon for foreign/Chinese companies to prefer mediation or to trust other arbitral bodies more than the UDRP.
  • Litigation: Companies can also file a lawsuit in court to enforce their trademark rights. This option will usually be more expensive and time-consuming than the UDRP or ADR, but it can make sense in more complex cases or in cases that are of critical importance to your company.

Case Studies on Domain Name Trademark Infringement

To better understand the practical applications of the legal frameworks and the complexities involved in protecting trademarks in the domain name space, I provide you with the following three illustrative case studies. These cases highlight different strategies used to address domain name trademark infringement and demonstrate the effectiveness (usually) of proactive legal action.

Case Study 1: Google vs.

Background: In 2009, Google filed a complaint under the UDRP against the domain name, arguing that was confusingly similar to its own trademark and that it was registered in bad faith. The domain was used as a search engine, which further contributed to potential confusion.

Outcome: The National Arbitration Forum, however, ruled in favor of the domain owner, finding that was sufficiently distinct from Google and more reminiscent of “groove” or “groovy” than “Google.” This case highlights the challenges in proving the “confusing similarity” standard under the UDRP.

Case Study 2: Microsoft vs.

Background: In a widely publicized case, way back in 2004Microsoft took action against a Canadian teenager named Mike Rowe who had registered the domain name for his part-time web design business. Microsoft argued that the domain name was a phonetic equivalent to its trademark “Microsoft” and could cause confusion.

Outcome: After public backlash and negotiations, the case was settled amicably. Mike Rowe agreed to transfer the domain name to Microsoft in exchange for compensation, including an Xbox. This case is an example of how public relations considerations can impact the resolution of trademark disputes.

Case Study 3: Panavision vs. Toeppen

Background: In one of the seminal cases on cybersquatting, Panavision International pursued action against Dennis Toeppen under the U.S. federal Anti-Cybersquatting Consumer Protection Act. Toeppen had registered and other trademarked domain names, then offered to sell them back to the rightful trademark owners at inflated prices.

Outcome: The court ruled in favor of Panavision, ordering Toeppen to transfer the domain. The court’s decision was based on the finding that Toeppen’s actions constituted bad faith intended to profit from Panavision’s trademark. This case helped set a significant precedent for later actions against cybersquatting under U.S. law. My law firm has used this case and its progeny many times in convincing Chinese companies to transfer their domain names to our clients, rather than fight, spend, and lose.


These cases illustrate the nuances of domain name trademark infringement and the varying degrees of success in enforcing trademark rights through legal channels. They underscore the importance of a well-considered strategy, analyzing and understanding the specific facts of each case, potential public relations impacts, and the evolving landscape of trademark law in digital spaces. By studying these cases, companies can better prepare and protect their trademarks from similar threats.

Importance of Proactive Measures Against Bad Faith Domain Names

Proactive monitoring and enforcement against bad faith domain registrations is essential. Swift action can not only preserve your  company’s online reputation, but it can also safeguard the broader legal rights associated with your trademark, preventing dilution and potential customer confusion.

The importance of vigilantly protecting your trademark rights through mechanisms like the UDRP cannot be overstated. Companies must remain vigilant, utilizing both legal avenues and proactive strategies to defend against the exploitation of their trademarks in domain names. Establishing a robust online presence requires not only strategic branding but also protecting that brand against infringement. By understanding and utilizing the tools provided by ICANN, and engaging in continuous monitoring of domain name registrations, businesses can effectively mitigate risks and maintain the integrity of their trademarks.