Beware of Domain Name Registration Scams

December 28, 2009

Companies with registered trademarks, active web sites and domain name registrations are likely to receive -- if they have not already received -- letters from "domain name registration service" companies and domain name registries warning that third parties have filed applications with them to register trademarks as domain names and offering to defensively register the domain names for the companies. These letters are generally scams and should not be responded to. Most of these letters are from Chinese or Hong Kong entities.

These letters warn the company that the domain name service has received an application to register a domain name which includes one or more of the company's trademarks. The service company notes that although it has received the application, it has delayed registering the domain name so that the company can register its trademark or name as a domain name. The letter goes on to state that the service company would be able to assist the company to register its trademarks instead, and end with a warning: “Taking no action now could lead to registration of the infringing domain name. Contact us now.“

While it is true that a company’s trademarks can be registered as part of domain names by third parties, our experience is that these warnings are really solicitations and that no third parties have applied to register the contacted company’s trademarks. In addition, the offered services are usually more expensive than other registries or services.

Most of these letters should therefore be considered scams and should not be answered. However, companies should also be forewarned: not registering your trademarks in geographic or online domains where the company operates can result in trademarks and domain names being hijacked by third parties seeking to sell the domains at a profit or to use them unfairly to compete with the trademark owner. Although most domain name registries provide some type of expedited and less expensive (than litigation) dispute resolution policy as part of their domain name registration agreement. Relying on such policies could be risky and expensive.

The bottom line is that companies owning trademarks that have established a web site or web presence, or utilize online advertising or distribution should develop policies and practices for registering, using and monitoring domain names and take the time to review their practices and policies with their trademark counsel.

Marshall, Gerstein & Borun’s attorneys have extensive experience working with clients to develop domain name and online practices and in policing trademarks and domain names online. We have been involved in all aspects of domain name registration and protection since the earliest days of the commercial Internet. Marshall, Gerstein & Borun provides advice, counseling and representation to help companies register, capture and protect our clients’ domain names and online intellectual property assets.

For further information on trademark or intellectual property matters or to discuss registering your company’s trademarks as domain names, please visit our Internet and Cyberlaw Web page.