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Trademark Owners Beware of Chinese Domain Name Marketing Ploy

Categories: Intellectual Property

Trademarks and domain issues

Let's face it, some marketing ploys are pretty clever and some spam is brilliantly disguised as valid e-mail. There are many great reasons to register your trademark with the United States Patent & Trademark Office, including:

  • Constructive notice nationwide of the trademark owner's trademark rights
  • Preventing others from registering and limiting your geographic trade area
  • Evidence of ownership of the trademark
  • Enhanced damages in the event of infringement
  • Jurisdiction of federal courts may be invoked
  • Registration can be used as a basis for obtaining registration in foreign countries;
  • Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.

Those are a lot of great benefits for a reasonably small price -typically under $1,000 to obtain your federal trademark.

Unfortunately, there is one small nuisance that sometimes comes along with federal registration. The trademark office publishes the contact information of all trademark owners and savvy marketers and scammers sometimes use that information to try to sell you services you do not need.

The latest in these marketing ploys is an email that looks similar to this:

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 September 12, 2009, one company which self-styled "Ratec Industries Ltd" is applying to register Jaburg Wilk as brand name and domain names as below:

jaburgwilk.asia

jaburgwilk.com.cn

jaburgwilk.hk

jaburgwilk.tw

jaburgwilk.in

jaburgwilk.net.cn

jaburgwilk.org.cn

After our initial examination, we found that the brand name applied for registration is 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 and this "Ratec Industries Ltd" is the same company, there is no need reply to us, we will accept their application and will register those for them immediately.

If your company has no relationships with that company or do not authorized, please reply to us within 7 workdays, if we can't get any information from yours over 7 workdays, we will unconditionally approve the application submitted by "Ratec Industries Ltd". Thanks for your cooperation.

Best Regards,

Leslie

Pretty clever, isn't it? This email makes you feel that if you do not act, and act quickly, some third-party company is going to grab your trademark and domain name in various countries in Asia. The goal is to get you to register a bunch of domain names with international suffixes.

In reality, there is no Ratec (we doubt there is a Leslie either). Earlier versions of this email campaign did not name names. It just stated that a third party inquiry had been made. The marketers have now honed their creative writing to make the third-party seem more real by giving it a name.

You might be asking yourself whether you should be registering domain names with international suffixes. That depends on your business plan. If you decide that you want to register yourcompany.cn, you can register it through a local domain name registrar, such as Go Daddy. There is not need to do business with a foreign company and certainly no need to fall victim to clever, but deceptive marketing tactics.

To summarize, there is no need to reply to the e-mail and most certainly no need to register your domain names with any domain name registrar that is not located in the United States. The Internet Law group at Jaburg Wilk can assist you with any legal issues you may have related to domain names or the Internet.


About the Author: Maria Crimi Speth is an Equity Partner at the law firm of Jaburg & Wilk PC. She specializes in Intellectual Property, Copyright and Trademark law as well as Litigation.