Interview with Robert White
Robert White is the Chief of IP Legal Enforcement at Lexsynergy and brings nearly 20 years of experience to the team
4 Apr 2023
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Defensive domain registrations are nothing new, it is advice we have been giving clients since 2006. However, almost 20 years later, we still see brands going through dispute resolution procedures or even court cases to regain infringing domains that could have been defensively registered for less than the cost of a meal.
This article highlights the importance of defensive domain registrations and why brands should secure domains that match their trade marks in the largest infringement hotspot in the world, China.
China, the leading global manufacturer, has long been associated with counterfeit goods. However, over the last 20 years, this skillset has been applied digitally, with China topping the table as the world’s leading digital infringement hotspot. Spamhaus’ list of the most abused domain registrars and a study by the World TradeMark Review estimating that China produce 80% of the worlds counterfeits, showcase China as the highest risk country for infringements globally.
Businesses are often stuck in the mindset that they should only register trade marks and subsequent domain names within the countries they currently operate in. However, this lack of foresight can often be dangerous to a brands global perception. Damage can be done to your brand within a country before you have started operating there, preventing the ease of future expansion into that region. With China, this is exasperated through their three Chinese domain limitation period...
If a brand finds their trade mark registered in .CN or .COM.CN extensions (or the IDN Chinese equivalent) and wishes to recover those domains, the process is dictated by the three year limitation period.
The CNDRP (China Domain Name Dispute Resolution Policy) allows trade mark holders to recover infringing Chinese domains via an arbitration proceeding that is faster and cheaper than local courts. In summary, it is China’s version of the UDRP (Uniform Domain-Name Dispute Resolution Policy).
As of June 18, 2019 the CNDRP does not accept domain names complaints for domains that have been registered for longer than three years (an extension on their previous two year policy). This is directly juxtaposed to the UDRP that does not have such term limitation on recovering domain within generic TLDs, allowing domain disputes to be submitted no matter the length of time (although delays are not recommended under the UDRP).
It means that if a domain infringing upon your brand has been registered for more than three years, you can no longer file a domain complaint to recover it, you would have to issue infringement proceedings through a local court. As seen in that table below, court proceedings are time consuming and costly; the last resort brand owners should be taking to own .CN domains that mirror their trade marks.
Acquisition Method | Registering Available Domain | CNNIC Dispute Resolution Policy | Chinese Court Case |
Price | Under $50 | Over $2,000 | Over $10,000 |
Time Length | Instant |
We understand that for every business, cost is a key factor and it can often be difficult to look past the upfront costs without the need for immediate use. However, we implore those reading this who are in a position to make a difference at their company to take the above into consideration and be proactive in protecting your brands through strategic defensive registrations.
We recommend brands to defensively register domains that mirror their trade marks in countries which are considered the most at risk from infringement. These include the following most popular and most at risk extensions: .CN (China), .IN (India), .DE (Germany) & .AI (Anguilla). Reach out to us for a more comprehensive list.
If you are reading this and aware that your trade mark is being infringed upon in China through .CN or .COM.CN domains, read on to find out how we recover them.
One of our clients, a prominent American investment management firm had their corporate trade mark targeted through identical domains registrations in the .CN and .COM.CN extensions. With their domain portfolio recently centralised with us and an active Domain Watch in place, we were able to alert them immediately of the highly suspicious registrations that matched their trade marks.
After deciding to recover the domains, Robert White, Head of our Brand Protection team, went to work on drafting and filing a domain complaint. We identified that this squatter had a track record of targeting other brands in the same industry as our client, which highlighted a bad faith element.
We also argued to have our submission made in English eliminating translations costs, which can sometimes be more than the complaint filing fees. In addition, our client did not have to incur the legal fees of briefing a local Chinese law firm, which can be significant.
The majority of domain complaints, under the UDRP and CNDR, filed by brand owners are undisputed. This case was an exception, as the registrant attempted to justify their actions with far-fetched comments and baseless arguments (a squatting rant).
However, in the face of a strong legal case made against the registrant, the panel dismissed the registrant’s assertions as “unconvincing” and ordered the transfer of the domains to our client, maintaining our 100% domain dispute resolutions success rate.
Swift enforcement action through a CNDRP process sent a strong message to this infringer and others to steer away from our client's brand.
We made our client aware of the three year limit to avoid delays in recovering the domains. Each country code Top Level Domain (ccTLD) dispute resolution procedures has its own set of rules that need to be understood so strategic decisions and actions can be take at the right time in the appropriate manner.
If you are interested in managing your domains and having visibility of the use of your trade marks online, in an affordable manner with strategic advice, then engage with us. Founded by lawyers, we have the expertise and practical application to safeguard your digital presence.
Robert White is the Chief of IP Legal Enforcement at Lexsynergy and brings nearly 20 years of experience to the team
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