Recently, many of our clients have received emails from purported Asian domain name registrars that utilize a particular scare tactic in an attempt to convince our clients to register domain names comprised of their brands with the .CN, .HK, .IN, and other Asian country code domain indicators. The emails allege that the registrar has received a third-party application to register certain domain names comprised of the client’s brand, and request the client contact them to discuss the issue. If and when the company does contact the registrar, the registrar attempts to sell the client those domains.

As an example, the email below (with names changed) was recently forwarded to us by a client:

(If you are NOT CEO,please forward this to your CEO, because this is urgent.Thanks.)

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 June 1 2010, One company which self-styled "ACME INTERNATIONAL,INC." are applying to register "abccompany" as Net Brand name and CN&ASIA domain names as below :

•    abccompany.asia
•    abccompany.cn
•    abccompany.com.cn
•    abccompany.com.hk
•    abccompany.com.tw
•    abccompany.hk
•    abccompany.in
•    abccompany.net.cn
•    abccompany.org.cn
•    abccompany.tw

After our initial examination, we found that the Net brand name applied for registration are as same as your company's name. These days we are dealing with it, hope to get the affirmation from your company. If your company and this "ACME INTERNATIONAL,INC."as 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 nor 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 "ACME INTERNATIONAL,INC."

Thanks for your cooperation.

Best Regards,

Registrar Employee

Like most unsolicited emails, the most prudent course of action when receiving one of these is generally to simply delete it. In the hundreds of cases that we have seen where our clients have ignored these solicitations, no third party has actually registered the purportedly disputed domain. However, for some companies, registering domain names with Asian top-level domains is of course a good idea. In that case, the company should consider contacting an authorized and reputable Asian registrar, rather than deal with the direct solicitors. We have frequently provided our clients with counsel concerning best practices.

Should you have any questions concerning this or any other issue concerning trademark usage and protection online, please contact Lee Eulgen (312-269-8465) or any member of the Neal Gerber Eisenberg Intellectual Property Practice Group.

 Download this Alert (PDF).