March 29, 2012

Suspect Warnings to Renew a Trademark or Register a Domain Name: What You Need to Know

Holland & Knight Alert
Thomas W. Brooke

For the past several years, companies around the world have received official-looking letters, fax transmissions and email messages from companies purporting to be government agencies or Internet domain name registries based in China, Hong Kong, Taiwan and elsewhere. The names on the letterhead, such as “United States Trademark Registration Office,” “International Register of Trademarks” or “CN Information Center Ltd.,” look authentic, but in reality they emanate from private companies soliciting unwitting trademark owners for work they do not need or have already paid for. The communications often urge owners to renew their trademarks, file in foreign countries, have a watch service monitor trademarks or even have the trademarks published in a vanity publication that goes to no one. The solicitations often come in the form of an “invoice” that looks as though it requires payment.

The U.S. Patent and Trademark Office, located in Alexandria, Virginia maintains an official website at It does not send solicitations or reminders — or even inquiries — to trademark owners other than in response to communications or filings. Trademark owners represented by counsel should only expect to receive communications from their lawyers.

Registering Domain Names: Fact versus Fiction

The Asian-based companies that are involved in the activities described above often issue dire warnings that an independent company has shown intent to register a domain name in China, Hong Kong, Taiwan or another location, incorporating the company’s name or mark, and advise the true owner to register the domain name before it is too late. On other occasions, the letters from the purported Asian registrar warn of a possible proceeding to determine ownership.

These emails are nothing more than marketing gimmicks designed to attract trademark owners to register, through the company sending the emails, as many domain names and Internet keywords as possible. Although many of the companies sending email solicitations for domain name registrations may be approved domain name registrar organizations, they are not necessarily reliable or trustworthy.

In most countries, including those in Asia, the domain name registration system does not require a domain name applicant to demonstrate that it has any prior interests in or rights to the name for which it applies. As a result, anyone can register any domain name, and the domain name registrar does not have any duty or obligation to examine the qualification of the applicant.

In practice, domain registrar companies do not contact the relevant trademark or trade name owners before reviewing a third party’s application for registration of the domain names. The registrar companies are under no obligation to make such inquiries, and it is actually not proper for them to do so, as a duty to investigate every single application would then be implied.

What to Do When Suspect Emails Arrive

Not only are these emails gimmicks, the companies are probably ”phishing” (trying to obtain sensitive/proprietary information), trying to sell domains by engaging in threats (that your marks are being appropriated as domain names by third parties) or simply trying to extort money. Trademark owners would be well served to make a business decision as to what (if any) country-specific domains may be of importance and then discuss the matter with your domain registrar or IT group, as well as counsel.

If a third party were to use a name or trademark registered in the United States as part of a domain name in China (.cn) or Hong Kong (.hk), or as part of another domain name, and attempt to pass off the corresponding website as authorized by the true owner, the trademark owner has a number of effective options to stop such infringing activity under U.S. law and the policies adopted by ICANN, the Internet Corporation for Assigned Names and Numbers.

The best course of action if you receive one of these email “warnings” or solicitations may be to simply ignore it. If you would like to find out more about the company named as a potential registrant to see what business it actually conducts, or if it actually exists in the first place, Holland & Knight can provide advice. If the Internet keyword and domain names mentioned are important to your business, we can work with you to obtain valid title to the names through accredited and reliable domain name registries. Whether this course of action is sensible should be determined independently of solicitations.

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