Registering your domain name in Asia before someone else does… Is it urgent? Is it necessary?

March 22nd, 2017

How to recognize pitfalls and how you can avoid them.

JOHANNE AUGER, partner and trademark agent & GAËL PICOUT, paralegal | Montreal

Have you ever received an email marked “URGENT” informing you that someone else is about to register your company’s name or trademark as a domain name with a foreign geographic extension? You’re not alone. These extensions have an exotic flair: China (.cn), Hong Kong (.hk) or even the entire Asian continent (.asia)… Although the sender is inviting you to take urgent action, caution is in order, for it is often a case of trying to pressure you (or even deceive you) into buying a service your company does not need.

The email is typically addressed to “the President & CEO” and it offers you an opportunity to short-circuit the third party’s attempt by immediately acquiring the domain name in question. Generally, the senders of these emails purport to be registrars who have spotted the suspicious application and are carrying out their “duty” to inform you accordingly. This technique, known as “slamming,” is tantamount to registration blackmail. Combining an official tone, high rates, and a very short response time, slamming is a type of extortion that has no economic or legal value.

To prepare yourself for this kind of scam, here are a few basic considerations to protect your presence online and in the marketplace.

Identify your marketing plans and your real needs

Are you intending to penetrate the Asian market or another foreign market? If so, one of your priorities should be registering the trademark under which you will be offering your products or services in the target countries, not necessarily the domain name in all of the geographic extensions.

The registration of this trademark is one of the best market penetration tools. It is also the best tool for taking action against the registration of domain names, without a legitimate interest, by other actors in your activity sector acting in bad faith.

The registration of multiple variants of domain names is far from always being necessary, or even desirable. Not only does it incur useless costs, it does not protect you against the registration of multiple variants by other actors in your activity sector.

By registering your trademark in the countries where you want to become established, you will, however, be in a position to take action against a third party having registered, in bad faith and without a legitimate interest, a domain name that is similar to or the same as your brand in your activity sector. Indeed, any person or company that registers a domain name automatically becomes subject to the applicable policy in the geographic extension in question. That party must therefore attorn to the dispute resolution mechanisms pertaining to domain names which allow the holder of a trademark to assert its rights. This is a valuable tool which allows you to take action in response to multiple situations, not just one specific case.

Adopt a domain name registration and management policy

Your domain name has become a sine qua non tool for all your activities in an increasingly connected world. While that domain name gives your company immediate visibility, thought must still be given to the various domain names that should be registered.

Keep in mind that the registration of a domain name does not provide any entitlement to the use of the name as such. Accredited registrars do not actually have any obligation to check whether the holder of a domain name has the right to use that name. “First come, first served” being the prevailing rule, caution is in order and it would be wise to check the availability for use of the name matching the domain name in question when launching a Website.

A few other considerations:

  • Study the various options derived from the registration of domain names in various extensions;
  • Ensure redirection to the company’s official Website;

  • Carefully manage the administrative data pertinent to their renewal and any possible transfer.

By prudently managing your domain name registrations, you will also be in a position to respond quickly to any request for validation by the relevant authorities, thus avoiding the loss of registrations that are important to the company. You will also be able to quickly identify any scams, such as renewal requests by fake registrars, or requests from registrars other than those used when the domain name was reserved.

In closing, while your online presence is essential, it also comes with a number of pitfalls for which you should be prepared. Our Internet Group can advise you about trademarks and domain names on the Internet and help protect your company’s interests on the Web.

Johanne Auger and Gaël Picout are members of BCF’s Internet strategic team, which offers our clients strategic advice regarding their online presence. This is a continually evolving environment which calls for the expertise of a multidisciplinary team like that of BCF.