13 replies to this topic

[cre8pc]

I keep getting these and wondered what's up.

To whom it may concern: 2009-7-29 We are a domain name registration service company in Asia, Last week we received a formal application submited by [name removed] who wanted to use the keyword "usabilityeffect" to register the Internet Brand and with suffix such as .cn /.com.cn /.net.cn/.hk/ .asia/ domain names.

After our initial examination, we found that these domain names to be applied for registration are same as your domain name and trademark. We aren’t sure whether you have any relation with him. Because these domain names would produce possible dispute, now we have hold down his registration, but if we do not get your company’s an reply in the next 5 working days, we will approve his company's application In order to handle this issue better, Please contact us by Fax ,Telephone or Email as soon as possible. Yours sincerely [name removed] Checking Department [removed]tech-wifi.com Website: www.tech-wifi.com Our File No.:1694006

I was harassed by another Asian company, for the same domain but different registrar and representing somebody different.

I own the .com, .net and .org. It's a web site, not a company. What is this "dispute" they refer to?

Can anyone explain what this is about? Is anyone else getting these?

[EGOL]

Lots of people get these. I think that they are attempts to lure you into registering additional domains.

A secondary impact has been that some US companies have panicked into thinking that Asian goods with their brand name could be introduced into US markets. So they are running to trademark their names to prevent damage to their brand.

Edited by EGOL, 29 July 2009 - 08:53 PM.

[iamlost]

Kim - take several deep breaths, in through the nose out through the mouth. Calm yourself. And then forthwith ignore all such solicitations as spam.

These email 'requests are total scams, cons, what have you, similar to the Nigerian with a zillion tonnes of gold who needs your help and savings...

First - note that they are a registration service - NOT a registrar.
Second - 99.99% of the time the domain is available and not being held 'as a service'.

If you respond to them they buy the domain (as you could do directly from the registrar or any affiliated registry agent) and resell it to you for a premium markup.

[cre8pc]

The first time it happened, I was emailed once a week for a month by the same company, each time they sounded more demanding. I finally emailed back and said I would not be bullied into trademarking my biz. The response was that I had a brief time to change my mind....and then I never heard anything.

Now this one shows up. This one is less professional looking than the first ones I got. I can see why companies are panicked. It really got my blood boiling... :emo3:

[Respree]

Difficult to tell if this is legitimate of if they are making false claims about another party wanting to register your name.

The dispute they are referring to appears to be potential trademark infringement. However, I don't see this as being an issue for them. It appears they are pretending to have legitimate concern for you, in their attempts at marketing. Unless you've got deep pockets with something valuable to protect (worldwide), most companies will not register a trademark throughout the world (any idea how many countries there are in the world?). This would literally costs tens if not hundreds of thousands of dollars (in attorney fees and trademark application fees).

If you don't mind having your name used by someone else in Hong Kong, Japan, China, etc., then there is nothing for you to protect. I wouldn't be too concerned.

[cre8pc]

Thank you Garrick. As usual, your calm assessment is very much appreciated

I did panic last month, thinking I had to trademark everything. I don't want to own global rights to the words "usability effect" and it ticks me off to think that is what is happening now. That people are buying words and claiming them for their own use.

[rustybrick]

I get these all the time. A scam.

[glyn]

If something is a trademark my understanding is that they can't register it.

Do you own a trademark?

G.

[jonbey]

These scammers are cheeky. They are everywhere. I have often received letters through the post telling me it is time to renew my domain (which is set to auto renew at the registrar). Obviously if I sign, they take control of the business. Shocking.

A bit like mini tender offers. OK, totally different. But there are legitimate companies in the USA who make "mini tender offers" for larger listed companies, and approach shareholders (institutional as well as private) with these offers. The offers are always well below the market value, and the terms are that once locked in you cannot get out, and they do not guarantee pay date, or infact, payment. Sounds mad, but it happens.

Tsk. The world is full of scammers. We take for granted the people that try to sell you rainproof wash for your windows or new roof on your perfectly good house, but when they start playing with bigger toys people start to think "it must be legit".

[cre8pc]

Glyn, no. Stupid silly me thought just having a web site with a certain title was enough

[joedolson]

You'd have to have very broad territoriality to your trademark in order to actually have protection in Asia. Usually, a trademark only offers limited protection: protection against people providing similar or confuseable services in a similar geographic region.

Trademarking Usability Effect would protect you -- but not against an asian domain registration. It would most likely only give you any significant protection within your local area; possibly as broad as the United States, given your broad client base, but possibly not even that.

And on top of that, you don't actually have to have registered the trademark to gain protections: an unregistered trademark is more difficult to defend, but you do have rights, based on length of use of the trademark, etc.

So yeah, totally a scam!

[jonbey]

Just reading about trademarks. Generally you can do it for your country, or there are various international routes, of which the Madrid Convention, run by some Swiss peps, look after.
http://www.wipo.int/madrid/en/


This is a handy read too, but UK targeted: https://www.ipo.gov....tialreading.pdf

"Please remember that registering a company name at
Companies House or an internet domain name with a
registrar, such as Nominet UK (www.nominet.org.uk), does
not mean we will automatically accept that name as a trade
mark. These registrations do not give you any exclusive
right to use that name. Also, a domain or company name
registration may infringe someone else’s trade mark"

And some more, back to Madrid, a list of countries that come under the Madrid Agreement:
http://www.wipo.int/...adrid_marks.pdf

Edited by jonbey, 30 July 2009 - 02:08 PM.

[jonbey]

And there's more:

I have registered my name as a domain name. Do I need to register it as a trade mark as well?

Yes. Most definitely. The domain name will not stop a competitor using your name as a trade mark. In fact, if someone else registers your name as a trade mark before you do, they can sometimes stop you using your domain name and make you transfer it to them.

http://www.uktradema...demark_faq.html

[TheManBehindTheCurtain]

Scam. I get one or two a week sometimes. Different companies. Different names.

As many are pointing out, ownership of a trademark does not entitle you to the domain. Having the domain is no proof of trademark. No relation, and not the reason to buy a domain per se. You'd buy the domain because you want to do business in that country and you think the local presence would give you some business advantage.

I assume some of these scam registrars will offer to "out bid" the (probably non-existent) competing registrant on your behalf. You're certainly better off to go with an established, credible registrar.

Keep in mind also that to register domains in many countries, including many Asian countries, you have to have an in-country presence. A branch office, or a business partner, perhaps a reseller who serves that territory for you. Many services will offer to serve as your in-country partner, but some of these are scams too -- the registration remains in their name, not yours. So essentially you're paying the bill and they are effectively the owner of the domain. In these cases you need a very good legal agreement, which is often hard to get across borders. I have seen very messy battles with large companies trying to wrest ownership away from a business partner who originally registered it on their behalf.