Originally published by Ballard Spahr Andrews & Ingersoll, LLP, 19 December 2007.

13 May 2008. In recent months, unknown organizations in China have been sending emails to companies in the United States claiming that the company's intellectual property (IP) rights are in jeopardy if it does not register domain names and/or keywords that are similar to or incorporate the company's trademarks. This deceptive business practice, which is designed to induce the recipient into registering new names with the organization, is not new and is a type of "domain slamming." Tactics used by these organizations include:

• Claiming that a third party has applied to register the domain name/keyword; and/or

• Claiming that the organization is affiliated with an official governmental entity, such as the China Internet Network Information Center (CNNIC), which is the agency charged with management of .CN domain names.

These communications are dangerous because the sender organizations have been known to:

• Include fraudulent clauses in their purchase agreements, such as long-term registrations and subscriptions to additional unwanted services;

• Sell the domain name and/or keyword registrations at above-market prices;

• Collect money but never register the domain names and/or keywords; and/or

• Attach viruses to subsequent communications.

What does it look like?

While the text of these communications varies, an example of a typical email is:

Dear [CEO/Manager/"Company"]:

We are [Insert Chinese Company Name], which is affiliated with the domain name register center in China. We received a formal application from a company that is applying to register your company brand as their domain name and Internet keyword in China. If you consider these domain names and internet keywords important to you it is necessary to protect them by registering them first.

Contact us immediately,

[Insert name and seemingly reliable contact details]

What should you do?

In order to best protect your company's IP interests, as well as prevent these organizations from defrauding it, we recommend the following steps:

1. Do not respond to the communication. As explained above, these organizations are engaged in deceptive business practices and should not be trusted.

2. Contact your domain name manager (i.e. the internal or external person or company responsible for your domain name portfolio). In many cases your company already has registered the domain names/keywords in these emails. If not, ask your domain name manager or IP counsel to assist in registering the names you are interested in with a reputable source. Do not attempt to register the domain names with the organization that contacted you.

3. File a complaint. Once you have contacted your domain name manager to discuss any additional registrations of interest, consider filing a complaint against the organization with the China Ministry of Information, which encourages affected companies to file complaints so that it can take appropriate punitive action.

Who to Contact

For more information about domain name and keyword slamming, and how Ballard's Intellectual Property group can help you and your organization identify, protect or leverage the full value of your intellectual property, please contact Jamie B. Bischoff, partner in charge, Intellectual Property Group, at 215.864.8207, Hara K. Jacobs at 215.864.8209, Brian J. Winterfeldt at 202.661.7650, or Bryce Coughlin at 202.661.7659.

Copyright © 2008 by Ballard Spahr Andrews & Ingersoll, LLP. all rights reserved.

Hara K. Jacobs is a partner in the Litigation Department and a member of the Intellectual Property Group and the Business Litigation Group in Ballard Spahr Andrews & Ingersoll, LLP.

Bryce D. Coughlin is an associate in the Litigation Department and a member of the Intellectual Property Group in Ballard Spahr Andrews & Ingersoll, LLP.