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Trademarks and Business Names as Domain Names

by | Apr 13, 2017 | Intellectual Property, Trademark

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Two of my clients recently encountered incidents involving domain name disputes.

One of my clients received an email from China stating that a Chinese company was going to purchase domain names that included my client’s company name. The company also stated that they intended to file a trademark application that included my client’s company name, as well.

The Chinese company wanted to know if the international trademark application and domain names would cause my client any international conflict.

The second incident involved a client who failed to automatically register the domain name for their website.  Another person purchased the domain name and then tried to extort a large amount of money from my client when my client tried to purchase the domain name back.  When the client refused to pay a large amount of money to the purchaser, the purchaser redirected the website to an adult content website.

Both of these incidents have provided some valuable educational opportunities.

Chinese scams

If you receive an email that states it is a company in China that “mainly deals with trademark registration internationally”, be careful.  The email may claim that they have been asked to file a trademark application and register domain names for a client that includes your registered trademark.  The email message usually asks you to telephone or email them within 10 working days.  The email is designed to trick trademark and website owners into unnecessarily registering a series of domain names at inflated prices.  If you receive one of these emails, do no reply or follow any links that the email contains.  For more information please click HERE.  There are several websites on the internet that report on this type of scam.

 Domain Name registrations

Make sure you renew your registration annually if you have registered a domain name that includes your trademarked company name.  Most registrars send a renewal notice approximately 30 days prior to the domain expiration date.  You will receive at least two reminders prior to the expiration date and one reminder within 5 days after expiration.  If your domain name is deactivated and then purchased by a third-party you may be out of luck.

However, if the domain name contains your trademark and the third party is a scoundrel who tries to extort a large amount of money from you, you might be able to file a Complaint under the ICANN Uniform Dispute Resolution Policy. This policy proves to be a cost-effective means for taking action against scoundrels who act in bad faith.  The Complaint will have to include the following elements:

1) The domain name is identical or confusingly similar to a trademark or service mark in which you have rights.

2) The respondent has no rights or legitimate interests with respect to the domain name.

3) The domain name was registered and is being used in bad faith.

The Complaint will be assigned to an arbitrator who will review the Complaint and the respondent’s answer.  While the Complaint is pending the registrar will freeze the domain name so the respondent cannot resell it to a third party.  If you are successful, the domain will be transferred to you and you can enter into an agreement with the registrar to use the domain name again.

So make sure you protect your trademarks that are used in domain names by not responding to Chinese scam emails and by making sure you annually renew your domain name with the registrar.

More Protection for your Trademarks

There are two additional ways to better protect your trademarks if you are using your trademarks to sell products and services internationally.

First, register the trademarks in the countries where you are selling your products or services.  This can easily be done through the United States Patent and Trademark Office if the countries in which you are doing business are part of the Madrid Protocol Treaty.  The Madrid Protocol “provides a cost-effective and efficient way for trademark holders to ensure protection for their marks in multiple countries through the filing of one application with a single office, in one language, with one set of fees, in one currency.” For more information click HERE.

Currently, ninety-eight countries have signed onto the Madrid Protocol which is managed through the World Intellectual Property Organization (WIPO).  You will need to hire an intellectual property lawyer in the countries where you are selling products/services to file the trademark applications for your business if you are doing business in a country that is not part of the Madrid Protocol.

A second way to provide better protections for your trademarks is to register your marks with the Trademark Clearinghouse.

The Trademark Clearinghouse is a centralized database of verified trademarks that is connected to each and every new Top Level Domain (TLD) that is authorized by the Internet Corporation for Assigned Names and Numbers (ICANN).  Each time a new gTLD is launched, registered trademark owners are given first priority in the registration of their trademarks with the new gTLD.  When someone wishes to register a domain name that matches your trademark record in the Clearinghouse, the applicant for the domain name will be alerted as to your rights.  You will be alerted when a registration is completed for a domain that includes your trademark name.

See www.trademark-clearinghouse.com for more information.


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