In fact, the conflict often occurs mainly between owners of trademark in Vietnam and the subject who register domain name for registration, possess and dispose of domain names.
Domain name and Internet is new progress of mankind, in Vietnam it was born in recent time later Intellectual Property right. It is a borderless and unreal environment.
Using internet to promote, marketing, and business exchanges is an inevitable trend in the present era. Investors often use the trademark/brand itself to register domain names and operates under that name. However, other subjects are unfair when they profit by rule “first come first server” to register domain names to appropriation of a trademark/brand of other owners as their domain.
In Vietnam, trademark is governed by the law on intellectual property while domain name is governed by the law on Information Technology Law (IT Law). So domain name is not subject of protection under Vietnam intellectual property Law. All things above are cause of the conflict.
In fact, the conflict often occurs mainly between owners of trademark and the subject who register domain name for registration, possess and dispose of domain names.
Methods of the resolution Dispute
Under Vietnam current regulations, there are two methods to resolve the above dispute:
1.The first method, negotiable mediation; arbitration; or civil/commercial lawsuit measures under Article 76 of IT Law; OR
2.The second method, administrative measures under Vietnam intellectual property Law.
In this article, we would like to present the contents, the advantages and disadvantages of each method.
The first method under Article 76 of IT Law (effective 01/01/2006)
Pursuant to the settlement of disputes of domain names .VN with trademark in Vietnam:
•Domain name is identical or confusingly similar to a trademark of the petitioners that the legitimate rights and interests; and
•The defendant has not rights or legitimate interests related to the domain name; and
•Domain name has been petitioned person used in bad faith.
Advantages of the first method
Firstly, respecting dispute of the domain name is disputes of civil nature, so the settlement of disputes shall be made only by means of civil or arbitration, to ensure that the parties are equal and have a chance to get the best protection full rights and their legitimate interests.
Secondly, this ways are suitable with International rules exactly Uniform Domain-name Dispute-Resolution Policy (UDRP) of Internet Corporation for Assigned Names and Numbers (ICANN).
Limitations of the first method
Firstly, negotiate and reconciliation measures are inappropriate because the cybersquatter have tend ransom great domain name (sometimes even millions of dollars) while costs money to register only a few hundred or a few million VND.
Secondly, resolve domain name disputes by arbitration is unrealistic because hardly any cybersquatter enough “courage” to agree to sign the arbitration agreement. Furthermore, domain name registration contract between the customer registrations: sketchy, generic, no provision relating to arbitration as a basis to apply the arbitration in case of disputes.
If there is an arbitration agreement, these arbitration agreements can Risks when the court can cancel them.
Finally, For Civil measures:
•No easy to have accepting decision within 60 days
•Costly when must participate in litigation with two levels of adjudication mechanism.
•It takes a lot of time (adjournment, summon the defendant …): up to 4 years as Larfage case
•Where not find the defendant (not summoned): many courts suspension/suspension of settlement of the case instead of default judgment defendant.
•Preparing complex documents, especially cases with foreign elements.
The second method under Article 130 of Vietnam intellectual property Law
– Article 130.1.d Vietnam intellectual property Law – Acts of Unfair Competition (Registration, possession or use rights to use domain names) as follows:
•Identical or confusingly similar to trademarks, trade names or geographical indications which they are not entitled;
•For the purpose of occupying, abusing or causing damage to reputation and brand reputation, geographical indications, trade names;
For above activities will be resolved as follows:
•Forcible removal of infringing elements on goods and business facilities and destruction of infringing elements; forced to change domain information or return the domain name; forcible change of company name, removing infringing elements in the business name
•Violation of 130.1.d subject to major penalties from 5 million to 20 million VND and remedial measures are required to change domain information or return the domain);
•Within 30 days of the measures decided administrative above recovery/return domain name, entity registered domain name shall voluntarily execute. After this time limit, if not execution, it will be enforcement agencies require decision making authorities revoked domain name.
Advantages of administrative measures
– Conducting fast, compact, less expensive than the dispute resolution methods such as civil lawsuits or commercial arbitration;
– Still respect the principle of “civil” in administrative procedures, for example to permit the requested explanations (reviewer allegations of the complainant), or for a reasonable time to the parties auto negotiation/ mediation together, or enforcers themselves assessed according to the regulations/procedures are defined quite complete (basically similar to the UDRP);
– Domain name disputes, administrative measures are still considered effective measures, saving, reliable, fair and selected most by right holders in resolving disputes in context Intellectual property rights scene no specialized IPR court.
Restriction of administrative measures:
+ Dissent resolve conflicts in the application of IT Law (Article 76) and intellectual property law (Article 130) between Ministry of Science and Technology, MOST, and Ministry of Information and Communications, MIC, to handle domain names infringing Intellectual property rights, led to many decisions administrative sanction issued by Inspectorate of the Ministry of Science and Technology in which additional measures are required to recall domain name unenforceable by Vietnam Internet Network Information Center, VNNIC, refuse to perform.
+ Structure and interpretation of Decree 99/2013/NĐ-CP and Circulars 11/2015/TT-BKHCN for administrative sanctions in the field of industrial property related to the conditions recovered domain name differs from the wording of Circular 10/2008 provisions on dispute settlement national domain name Vietnam and Decision 73/2010 of the VNIC instructions for handling domain name disputes nation .VN (which is based on the UDRP).
Summary and expectations
Currently, there is a separation between infringement of trademark rights and domain name disputes. Which mean separation the handling of infringement of content website and reclaim the domain name. The issues related to domain name disputes under Article 76 will handle under dispute of civil by negotiation or conciliation; arbitration or court. MOST and MIC only processed infringement of intellectual property rights through administrative decisions.
Recently, MOST and MIC had organized a seminar on “Resolving complaints and disputes over domain names and intellectual property” in Hanoi, Vietnam. The Seminar had participation of international experts from WIPO and ICANN. At the seminar, Mr. Phan Quoc Vinh – Legal Department, MIC introduced draft a Joint Circular guiding the order and procedures for change, revoke domain name violates the law on intellectual property. This circular will solve the problems which are cause difficult for the parties in the recent past as well as harmony between rights issues and the interests of the parties to a conflict. This is also directions resolve the conflict between domain name and Trademark in Vietnam in the near future.
Ageless IP Attorneys & Consultants