As webmaster for several law firm web sites, I have received this e-mail several times stating that a version of [my client’s] domain name is being registered in China and that if the firm wants to protect its domain and trademarka, they should purchase this domain before it is sold. HOLD THE PHONE! This is a scam. And it just dawned on me that I should write a post about it to help raise awareness.
But let me defer to someone who can better explain it. Here’s a great post dissecting this e-mail scam by Stuart Hiserodt, who authors Austin Technology Law Blog: Trademark and Domain Name Scams from China
In the blog post Stuart writes,
So what if this email was real? What options would you have to protect your name? If you have a United States Trademark, the protection afforded to you applies to within the jurisdiction of the United States. So if a company advertises and provides goods or services in connection with your trademark, but only in China, you won’t have much recourse. The company would have to advertise and put their mark into the stream of commerce in the United States. If the foreign company does establish a presence in the United States, in order show infringement you would need to show you had a prior use of the trademark, there was a commercial use of your mark, and likelihood of confusion of the foreign use (similar goods or services, etc). If infringement is difficult to prove, cybersquating claims exist one could raise depending on the use of the foreign entity. However, the success of the cybersquating claim would depend on the foreign entity’s use of the mark.
The letter is from YNGNetworks and it is copied here below…
We are a Network Service Company which is the domain name registration center in Shanghai, China. On October,20th,2010, We received HUAXIA Company’s application that they are registering the name “gcglaw” as their Internet Trademark and “gcglaw.cn”,”gcglaw.com.cn” ,”gcglaw.asia”domain names etc.,It is China and ASIA domain names.But after auditing we found the brand name been used by your company. As the domain name registrar in China, it is our duty to notice you, so I am sending you this Email to check.According to the principle in China,your company is the owner of the trademark,In our auditing time we can keep the domain names safe for you firstly, but our audit period is limited, if you object the third party application these domain names and need to protect the brand in china and Asia by yourself, please let the responsible officer contact us as soon as possible. Thank you!
Shanghai Office (Head Office)
Registration Department Manager
3002, Nanhai Building 854.Nandan Road
Xuhui District, Shanghai
Email: info @ yg – networks . com
Office: +86 0553 4994789
Fax: +86 0553 4994789
web: yg – networks . com
Sadly or gladly, we fell for this scam. What prompted us to purchase domain names with China extensions is having fought a legal battle with scammers in Hong Kong already trying to steal our internet identity. After that we purchased every extension we could to protect ourselves, and then this China thing. And, there were even phone calls in addition to the tons of emails!
When your business is at risk globally (and especially with China), you need to ponder the what if. We elected to be “safe.”