Intellectual Property Law

Solicitation by Domain Name Registrar in Asia

By Sheppard Mullin

The following is a typical solicitation letter from a domain name registrar in China or Hong Kong.  Such letters are often sent indiscriminately en masse to registrants of .com domains.  “Halliton Holdings, Inc.” is usually a fictitious company crafted by the sender to induce alarm.  Such letters often elicit a panicked response from the recipient.

Dear CEO,

We are the department of registration service in China. We have something need to confirm with you. We formally received an application on March 26th 2008, one company which self-styled "Halliton Holdings, Inc" are applying to register "smrh" as internet brand and CN domain names as below:

smrh.com.tw
smrh.hk
smrh.net.cn
smrh.org.cn
smrh.tw
smrh.asia

After our initial examination, we found that the internet brand applied for registration are as same as your company’s name and trademark. These days we are dealing with it, hope to get the affirmation from your company. If your company has not authorized the aforesaid company to register these, Please contact us as soon as possible.

In addition, we hereby affirm that our time limit for dissent application is  ten days.  If your company files no dissent within the time limit, we will unconditionally approve the application submitted by "Halliton Holdings, Inc.".

Best Regards,

[Name redacted]

Although individual circumstances can vary, it is usually best not to respond to these letters.  The claims are typically made-up.  The sender probably never bothered to check the availability of the domains mentioned in the letter.  It is likely that some of the stated domains are already sold to third parties.  The sender is most likely not a legitimate company and its sole purpose is to solicit business from the recipient.

Although the recipient should usually ignore the letter, the recipient should not ignore the importance of domain names in Asia.  A domain name is often called an “online trademark” and can be a precious intangible in the age of the Internet.  This letter is a good reminder that domain names in Asia are available and should be considered when managing a company’s intellectual property portfolio.

When considering whether to register domain names in Asia, a company should first consider its current market and potential market.  If the company is actively doing business in particular countries, it may make sense to register the domains of those countries.  However, for certain countries that the company is not doing business in, it may still be wise to register those domains as a protective measure to prevent others from unjustly profiting from the company’s brand.  Registration fees range from about $20 per year for .cn (China) domains to about $200 per year for .jp (Japan) domains.  The cost of disputing a prior registration by a third party will be significantly higher.

Domains that are most likely to be misappropriated by others are the .cn domains.  Because of the low registration fees for .cn domain names, third parties often register these in bulk and then put them up for sale on their own.  Therefore, a company should consider registering a .cn domain name as a protective measure.

Online domain name registrars in Asia vary in size and quality of service.  For .cn domains, a company should choose a qualified registrar who is certified by the China Internet Network Information Center (CNNIC).  CNNIC is the managing organization of “.cn” domain name registration in China.

Authored by:

Sheppard Mullin's Shanghai Office

86.21.2321.6000

Full post as published by Intellectual Property Law on August 11, 2008 (boomark / email).