Smart operators think ahead on IP strategies to protect domain names

By Kevin Xu, HFG
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Domain names, as an important part of an enterprise’s intellectual property, have the function of differentiating the origin of goods and services, much like trademarks, and are an important platform for users to contact the enterprise and learn about the enterprise on the internet. Today, where information networks have developed to an astounding degree, the protection of domain names has become a matter of great urgency and enterprises should formulate a strong protection strategy at the earliest possible.

Comprehensive preparation

Before opting to register a domain name, an enterprise must carry out a comprehensive review of its trademarks, product names, corporate trade name, numbers, symbols, etc. and select the necessary words to be registered as domain names. This should include:

  • Comprehensively protecting the transliterated forms of its trademarks in Chinese, English and pinyin, e.g. for the “长城” brand, “Greatwall”, “长城” and “Changcheng” may be simultaneously registered as domain names;
  • Registering the Chinese, English and pinyin forms of its corporate trade name or abbreviation of its corporate trade name as the main part of domain names, e.g. “中粮集团”, “中粮”, “Zhonglianggroup”, “Zhongliang”, etc.;
  • Product names, i.e. the unregistered trademarks or important sub-brands that the enterprise uses in the course of its business, and proprietary names of certain goods;
  • Numbers and symbols that have clear directionality, e.g. China Mobile’s No. 10086.
Kevin Xu, Trademark Lawyer, HFG Shanghai
Kevin Xu
Trademark Lawyer
HFG
Shanghai

Expanded defence

In contrast to trademarks, domain names have the character of uniqueness. The absence of publication, announcement, opposition, dispute and other such supervisory procedures in the application process presents certain opportunists with an opportunity that they can take advantage of, slightly modifying a word that they can then register as a new domain name. The defensive registration of related words can, to a certain extent, assist in avoiding such occurrences. Accordingly, we recommend:

  • Registration of similar words, e.g. for the trademark “Yahoo!”, words such as “yahooo”, “yahu”, etc. can be registered;
  • Registration of pinyin plus English combinations, e.g. for China Mobile, registering “chinamobile”, “zhongguomobile”, etc.;
  • Registration of a related word in combination with particulars of the operation or the products of the enterprise, e.g. Wuliangye, which mainly sells alcoholic beverages, can register “wuliangyeliquor”;
  • Combining the enterprise’s territorial extent and the words in its brand, e.g. for the trademark “长城”, “中国长城” and “chinagreatwall” can be registered;
  • Registering a combination of a feature of the product or service and the words in the brand, e.g. a service provider that provides e-commerce services can add “e” or “e-” at the beginning of the word.

Selective registration

Certain multinational corporations and large enterprises own several tens of brand products. Blindly seeking to register them all would result in significant registration and maintenance fees. For such enterprises, we would recommend selective registration:

  1. Registering the most important corporate trade names as domain names;
  2. Selecting main brands and hot-selling brands to register;
  3. Registering the enterprise’s name and the names of main products; and
  4. Based on the company’s strategic plan, registering the words of brands that it could put on the market, or expend key efforts to develop in future.

Additionally, the selection of the suffix portion is important. Here are some recommendations.

  • “.com”: as the international top-level domain name, the .com domain is an option that no enterprise or individual can do without;
  • “.cn”/“.com.cn”: if an enterprise wishes to carry on business activities in China, we recommend that it simultaneously registers the top-level domain name “.cn” and the second-level domain name “.com.cn”; at present, China’s top-level English-language domain name is gradually being opened up so that foreign enterprises can also register it;
  • Chinese-language.cn/“中国”/“中”: Chinese-language domain names are a new form of domain name that has opened up in recent years, and registration of any one of the three forms gives the registrant ownership of all three forms;
  • English-language.中国: English-language.中国 is a domain name that was made available to the public on 29 October, and is set to become one of the main trends in the future development of Chinese domain names – and is also causing pirates to salivate. We recommend that enterprises promptly register it;
  • “.cn.com”: this form of domestic second-level domain name was made available to the public quite early on. However, relatively few enterprises have attached importance to it. We feel that getting that second-level domain name into the bag as soon as possible is a rational move;
  • Other country code top-level domain names: due to globalisation of economics and trade, enterprises should pay attention to the country-code domain names where their business territories are located. If the scope of business of a Chinese enterprise involves a number of other countries, it should consider registering the country-code domain names of those countries, e.g. “.jp” for Japan.

Preventive action cannot guarantee an absence of setbacks. If any pirate registration of an enterprise’s words as a domain name or other domain name that infringes an enterprise’s lawful rights and interests is discovered, it must be remedied through legal means such as negotiation, mediation, arbitration and civil action.

Once an enterprise discovers that its domain name has been preemptively registered, it may negotiate with the other party and pay a reasonable price to recover the ownership. If the negotiations are unsuccessful, an enterprise can recover ownership through a dispute resolution procedure. Such procedures have the advantage of being quick and short, but are not judicially final. An enterprise may also, through a civil action, demand that the other party halt use of, and transfer, the domain name.

Kevin Xu is a trademark lawyer at HFG in Shanghai

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