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Trademarking a domain and Chinese companies

My client has been approached by a company in China. (govidc.org.cn) They are asking my client to produce a trademark certificate of their name. If they do not this company will register my client's domain in China using myclient.com.cn, myclient.net.cn, myclient.org.cn, etc.

Where are domain names trademarked? And has anyone experience a need to buy their own domain names in . with the cn extension.

Buying them, of course, ourselves, might just take care of all of this.

Any advice would be great.

Thanks
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isighttech
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isighttech
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1 Solution
 
PeterMacCommented:
Not a legal expert, but pretty sure of facts on this.
Chinese company is actually being very correct, and friendly. There is no real reason why they could not register the names anyway, even if your client does have trademark for the base name. As long as they could show a) they had some justification for choice of name themselves, and b) they were unlikely to harm your clients business by the use of the name, a legal challenge against there use would be very unlikely to succeed.

Your client only OWNS the names actually registered. If a large enough company might be worth while registering for different country extensions, and comon variations on name, but this will quickly build into an enourmous list of domain names.

I would query Chinese company as to their reason for wanting to use name, and unless there is an obvious conflict with your client, probably not worth effort of stopping them. I would consider your client trading, or wanting to trade in China as an obvious conflict.
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isighttechAuthor Commented:
Thank you Peter. Well said.
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PeterMacCommented:
best protection is to make sure your client uses a good submission engine for any websites, to ensure they are the ones found when searching by name.
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arthurjbCommented:
The law is actually fluid on this subject.  

I think that this is actually a sales pitch.  In other words, what they really want is for your client to register the name.  

Otherwise they would have registered the name and waited for your client to challenge them.   The current registration system allow anyone to register any name, and the proof falls on someone else to prove that the registrant has violated copyright, trademark, or whatever.

Maybe the company is being altruistic and really wants to d the right thing, but I doubt that.  Sorry, but with all the stuff that goes on the internet , I tend to be really cynical...
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dragonjimCommented:
I'd register the name where they plan on doing business.

My understanding (not a lawyer) is its largely first-come first-serve in registration of domains; provided that the applicant who first applies has a valid claim to that URL vs simply trying to profit in resale.

I think the one big no-no is 'squatting' ... purchasing www.nike.com with no intent to use it, and then demanding the sneaker company pay $3,000,000 for the rights to it.  However, a historian researching the effectiveness of the Nike military program might be able to register and defend owning nike.com.

Short of registering the domains, might be best to seek a legal opinion, as the question actually regards the LEGAL side of domain naming and registration.
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arthurjbCommented:
>>I think the one big no-no is 'squatting' ... purchasing www.nike.com with no intent to use it, and then demanding the sneaker company pay $3,000,000 for the rights to it.  However, a historian researching the effectiveness of the Nike military program might be able to register and defend owning nike.com.

You would think that is true since it makes logical sense, but that is not how it works.

Basically anyone can register any name, and someone else can take it if they "Prove" to a court that they have the right to it.  In a real life example, the domain http://www.madonna.com/ was owned by a convent of nuns that had something to do with the Madanna of the Bible.  The singer's lawyers "Proved" that the singer had more rights to the name than the hundreds of year old religious order, and in the end they were forced to give the domain to her.

It does seem though that in other cases, what you do with the domain has a big bearing on the outcome. If the domain is obviously being held for ransom, the it is likely to be lost in the dispute.
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dragonjimCommented:
Interesting... as I prefaced, I am by no means a lawyer, and often times am baffled and amazed by the apparent stupidity of some rulings. madonna.com is a good example.
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