What do you do when you receive an email from a domain name registrar informing you that there has been an attempt by an unauthorized entity to register your name as a domain name in China? Al Tamimi's IP/IT Practice Group regularly receives and resolves enquiries from clients about this type of approach. The Deal A common scenario painted by the domain name registrar is as follows:
The registrar is an authorised domain name registrar in China;
A third party has attempted to register a domain name (or a 'Chinese internet keyword', discussed further below);
From due performance of their internal audit policies, the registrar has found out that the name (perhaps a company name or a brand name) actually belongs to you or may be connected to you;
The registrar has delayed the registration momentarily to contact you to ascertain whether you might have authorized the third party to register the domain name;
If you have not authorized the third party, the registrar will give you first priority and offer to register the domain name on your behalf to block the third party from doing so (and explain that if you do not wish to secure the domain name or keyword, the registrar will have to action the third party's request to register the domain name or the keyword);
The registrar will highlight that matter is of extreme urgency.
The Prized Domain Names Common Chinese or Asian domain names used in such emails are: " .cn, .tw, .hk, .asia, which are the general designations for China, Taiwan, Hong Kong and Asia respectively; and " .com.cn, .net.cn, .org.cn, which refer to a business or company or organisation in China (similar to .com.sa or .net.sa in Saudi Arabia and .com.ae or .net.ae or .org.ae in the UAE).
Like .com, .com.sa, and .net.ae domain names, .net.cn, .cn and .com.cn domain names are registered on a 'first come, first served' basis. A registrar is under no obligation to investigate whether or not an application to register a domain name may infringe a third party's trade mark rights, or to impose a stand-down period while such issues are considered. Scaremongering The fact is, if a third party wished to register your company name or brand as a domain name, it would have simply registered it. The 'kindly' domain name registrar referred to above, is fooling you. Registrars that persist in such activity are simply alarming those who are unfamiliar with domain names into registering domain names that they might not really need. Essentially, unwitting buyers are being sold domain names of dubious value to their businesses. What do you do? AVOID dealing with such 'racketeers' and assess your actual needs.
Is China part of your business plan? China is now the world's second largest economy having overtaking Japan recently.
Do you see Chinese consumers searching for www.yourname.cn or www.yourname.com.cn?
Would your marketing plans be completely derailed if someone else held such domain names?
If so, then consider registering an appropriate Chinese domain name at your own pace - and not as a knee-jerk reaction to this type of approach. Chinese Internet Keywords A variation of the scam (or 'sharp business practice') relates to 'Chinese internet keywords'. The general scheme is the same as set out above in respect of domain names, although the registrars will be offering your brand name or company name, typically in Roman characters, as a 'Chinese internet keyword'. A Chinese internet keyword is a word that has been registered so that if it is typed into the address bar of a web browser, it directs the user to a specific domain and website. For example, it might be possible to register YOURNAME as an internet keyword, and link it to your website at www.yourname.com. Would-be customers who enter YOURNAME into the address bar of their web browsers would be directed to your website for some online shopping. The whole reason for these keywords is to enable internet users to locate websites by entering keywords instead of having to remember or type out an entire domain name. A key point to remember is that Chinese internet keywords that might be offered to you only operate on supported internet browsers, and basically only in China. The majority of Chinese internet users are likely to be using Chinese characters to do their web searching. In that context, registering your brand or company name as a Chinese internet keyword - in Roman characters - may have limited practical value. Much as in the case of domain names, the important question to ask is, 'Do you actually need these Chinese internet keywords?' In a nutshell, we recommend that you exercise due caution when encountering 'pressure selling' relating to domain names and Chinese internet keywords. There are a number of other points to consider in respect of branding and trade mark protection for the Chinese market; suitable domain name protection is just one of them. Sitting down with your IP lawyer to discuss the practical considerations of branding and trade mark protection in China will be well worth it for any one seriously looking to develop their Chinese business.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
Mr Stephen Jiew
Al Tamimi & Company
Dubai International Financial Centre
6th floor, Building 4 East
Sheikh Zayed Road,
UNITED ARAB EMIRATES
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