How to protect the internet domain name in China
From our branch IC&Partners Asia
There are 2 most frequent situations that occur:
a) Many foreign companies that own a .com, .net or national domain name extensions are asked by a Chinese Provider to register a number of Chinese domain name extensions (for example .cn, .com.cn, .net.cn) – slamming.
b) a Chinese person or company registers – in bad faith – a domain name identical to a foreign company’s domain name or trademark name, in order to sell at a high price the Chinese domain name extensions to its rightful owner of the trademark or name – cyber‐squatting.
a) Many foreign companies that own a .com, .net or national domain name extensions( for example .it for Italy) have already received some e-mails from Chinese Internet Providers that are trying, in bad faith, to encourage the foreign company to register a number of Chinese domain name extensions (for example .cn, .com.cn, .net.cn).
These Providers typically claim that they have received a registration request from another company who wishes to register domain names that are identical to the foreign company name or trademark. Indeed, this is a well known fraud operation known as slamming: there is no request by another company and Chinese domain name Provider is simply trying to persuade the foreign company to register Chinese domain name extensions in order to profit from such an order.
In many cases, this is just a tentative of fraud and, if the foreign company ignores the e-mail, the Chinese Provider will not register the Chinese domain name extensions; but it’s advisable to prevent further fraudulent actions and reply to the Chinese Provider that this email will be reported to CNNIC (China Internet Network Information Center – the Authority in charge for Chinese domain name registry) as an attempt at fraudulent activity and later forward the email to CNNIC. Only in case the foreign company is really interested to use the Chinese domain name extensions and avoid further problems, it is advisable to register them through a local Internet Provider (different from the Provider sending the fraudulent e-mail).
b) The problem is more difficult to solve if a Chinese person or company (in the internet slang so called domainers), with no legal rights, consciously and in bad faith registers a domain name identical to a foreign company’s domain name or trademark name. This kind of infringement is known as cyber‐squatting and is taking advantage of the first to file principle that applies to domain name registrations, and is seeking to sell at a high price the Chinese domain name extensions to its ‘rightful’ owner of the trademark or name related to that Chinese domain name.
In this case, the foreign company may file a Complaint against the illegal registration of domain name: in accordance CNNIC Policy, in order to succeed in the administrative proceeding and obtain an order that a domain name should be cancelled or transferred, the Complainant should prove each of the following three elements:
1) the disputed domain name is identical with or confusingly similar to the Complainant’s name or trademark,
2) the disputed domain name holder has no rights or legitimate interests on the domain name (or relevant name or Mark),
3) the disputed domain name holder has registered or is using the domain name in bad faith.