It is not uncommon for companies to find their trade marks registered by others as domain names since domain names are allocated on a first-come-first-served basis. The act of registering another company’s trade mark as domain names with a view to profiting from that company’s goodwill, often by offering to sell to that company or his competitor the registered domain names at an inflated price, is generally referred to as “cybersquatting”. A company’s trade mark may also be registered by competitors as a domain name for the purpose of disrupting the company’s business. Mechanisms of domain name dispute resolution are available in Hong Kong for trade mark owners to protect their rights against such bad-faith registration by cyber squatters, no matter whether the trade marks have been registered in Hong Kong or elsewhere.

Here at ONC, we offer a range of pro-active services to help our clients protect their trade marks from being misused as domain names, which would cause confusion and disruption to the market place. We assist our clients in monitoring the domain platforms for availability, applying for and registering domain names, advising on internet gaming and multimedia regulations; and data protection.

Examples of our work include:

• assisting a major bank in obtaining domain name registrations;
  
• arbitration to recover domain name for a major apparel company;
  
• preparing domain name transfer agreements for a prominent cosmetics company;
  
• advising a leading global gaming platform on regulations in relation to online streaming and data protection services; and
• advising a leading property fund on its use of social media, advertising and development of online and mobile applications.

If you would like to know more about our intellectual property practice or how we can help your business, please contact us at (852) 2810 1212 or at ip@onc.hk.

Please refer to our articles in ‘Knowledge’