Registration of an Domain Name Similar to Ours on a Foreign Register

[brock37]

Hello,

I'm the owner of a website. I own the domain name internationalpeptide.com, internationapeptide.net, and internationalpeptide.org as well we the plural form of peptides for all three .com, net ,org. I received an email today that stated,

"Dear Sir or Madam,

We are a registrar for domain names authorized by Chinese government. Today, we received an application from NKSX Global Ltd applying to register internationalpeptide as their brand name and some top-level domain names(.CN .HK etc). After our initail checking, We found the main body of domain names is same as yours.

We are handling the application and we need to confirm whether or not you authorize them to register them? Let me know your positon ASAP so as to solve it promptly. Looking forward to your reply."

The first part sounds like a courtesy email, but then they state " we need to confirm whether or not you authorize"

So can I tell them they are not authorized? Do I have any legal ground on this matter? I would rather them not use the same company name as mine.

Thanks,

Brock

[jk]

I suspect they are asking because, if you own the trademark International Peptide, you could have a valid complaint of trademark infringement. They are likely wanting to prevent a court battle if they can.

I find a Peptides International registered as a federal trademark but I have not found International Peptide. Peptides International isn't you, is it?

[brock37]

Peptides International is a different company. They usually go by the name Pepnet.com but if you type in peptidesinternational.com it will redirect you to pepnet.com

[jk]

and they have not contacted you about a possible trademark infringement matter?

[brock37]

No, they haven't. Our company name is International peptide. Theirs is Peptides International. So not only are they using the plural form of peptides, their name is backwards compared to ours. We didn't even realize their co. was around for 6 months after doing business because their main domain is Pepnet.com.

[jk]

No, they haven't. Our company name is International peptide. Theirs is Peptides International. So not only are they using the plural form of peptides, their name is backwards compared to ours. We didn't even realize their co. was around for 6 months after doing business because their main domain is Pepnet.com.

backwards, forwards, plural, singular;

Usually not enough to not be considered infringement. The basis for determining if there is infringement is whether it causes confusion in the target market. That means if somebody mistakes your company for theirs because of the similarity, there is infringement.


They registered theirs in 2009. Anything I saw regarding your company was no older than 2014. Not only does that mean they have the benefit of they used their name first, they also registered theirs federally.

[Mr. Knowitall]

I suspect that if you object to the registration, you'll be offered the opportunity to pay them money for the domain names.

[brock37]

Well, I can see we are off topic. Anything in regards to the co. Pepnet.com is irrelevant to my initial question. Pepnet is a co. in Tennessee.

The original question was in regards to a new co. in China that wants to use my domain name internationalpeptide. They can't use .com, .org, or .net because I have those registered. They are a new co. that wants to use internationalpeptide. But, use internationalpeptide for domain names like internationalpetide.CN and internationalpeptide.HK. I don't have those registered and I couldn't unless I went through the Chinese governement to authorize the registration of internationalpeptide.CN. Please read my initial question.

[jk]

as I said before, I suspect they are concerned with infringement issues, especially if they intend on doing business in the US.

If they do not do business in the same geographical area as you, there is no issue with them using the name. If they are in a competitive market, geographically, there is a trademark issue. Given they contacted you to discuss the matter, I suspect they intend on doing business in a competing market.

Realistically, you will have to ask them why they are concerned as only they know for certain. The best I can do is guess what they are thinking.

[Mr. Knowitall]

as I said before, I suspect they are concerned with infringement issues, especially if they intend on doing business in the US.

Except the contact is supposedly by the registrar, not the company seeking to register the domain name. I find it difficult to believe that the Chinese registrar is tracking down and contacting every company that has a domain name similar to one that has been submitted to them for registration. I find it much more likely that this is an elaborate sales pitch for the .hk version of the domain name.

And... look what ten seconds of Google searching turned up.