As the internet continues to grow as a marketing and sales tool for businesses, so too does the number of internet scams and frauds. The increasing complexity of internet scams can make it quite difficult for a trade mark owner to tell the difference between a legitimate sales solicitation that might be appropriate to consider and a blatant scam that should be avoided.

One particular type of internet scam that seems to be increasing in its occurrence is the so-called domain name and keyword availability scam. This type of scam is a solicitation by which a domain name hosting company pretends to be an accredited domain name registrar (often in a foreign country). The company usually sends a formal looking e-mail to a trade mark owner in which it claims that some third party has contacted them about registering certain foreign domain name extensions and keywords incorporating the trade mark owner's marks. These e-mails have subject headings such as, for example, "Dispute intellectual property rights", and claim that the registrar has investigated the domain names/internet keywords at issue and found them to be identical to the trade mark of the trade mark owner to whom such e-mail is directed. The e-mail concludes by providing a deadline for the trade mark owner to call before it allows the third party referenced in the e-mail to proceed with registering the domain names and/or internet keywords at issue.

In virtually all domain name and keyword availability scams, the third party referenced does not exist. Rather, the purpose of these e-mails is to frighten the trade mark owner into registering certain foreign domain name extensions using that registrar. It is, in short, a solicitation made under the deceptive cover of a threat to the trade mark owner's rights.

When a trade mark owner receives these types of solicitations, they should promptly forward them to intellectual property counsel who can provide guidance on how to proceed. With the advice of counsel, the trade mark owner can make a determination as to whether there are any foreign domain name extensions that it would like to register and then proceed to register such domain names with an accredited agency.

While it may not be possible to stay on top of all of the existing internet scams, being aware of common schemes and working with intellectual property counsel can help a trade mark owner protect his or her rights.

Karen Artz Ash and Bret J Danow

Katten Muchin Rosenman LLP
575 Madison Avenue
New York, NY 10022-2585
United States
Tel: +1 212 940 8554
Fax: +1 212 940 8671
karen.ash@kattenlaw.com
www.kattenlaw.com