What is Domain Name?
According to ICANN, Domain Name is a unique identifier with a set of properties attached to it so that computers can perform conversions. Most commonly the property attached is an IP address. A familiar string of letters, for example, “google.com” instead of the arcane IP address “188.8.131.52”. In other words, instead of typing “184.108.40.206”, you just type www.google.com
A Domain Name may consist of Generic Top Level Domain, abbreviated as gTLD or also commonly known as “international domain” (e.g..COM) and Country Code Top Level Domain, abbreviated as ccTLD or also practically known “national domain” (e.g. .VN for Vietnam, .SG for Singapore, .JP for Japan, .CN for China).
Pursuant to the Vietnamese Law on Information Technology of 2006, Vietnamese national domain names ending in “.VN” as well as their lower-level domain names, which are legally identified as a part of the national information resources, are currently administered by the Vietnam Internet Network Information Center (VNNIC), an affiliation to the Ministry of Information and Communications (MoIC).
Why Did Domain Name.VN related Disputes Occur Increasingly?
With its easily memorable composition of letters, Domain Name, which is able to perfectly substitute hardly memorable IP addresses, has become, beyond controversy, an effective tool to localize those IP addresses on the internet, enabling the connection and information share among millions of computers all over the world. In that context, enterprises’ use of trademarks, business names or unique trade identifiers to constitute their Domain Names has become evident.
Nevertheless, as every Domain Name including Domain Name .VN shall be registered only if it meets both of the two requirements “uniqueness” and “first come – first served”, thus, like other jurisdictions in the world, there have been a great deal of cybersquatters those who have registered, trafficked in or been using that Domain Name with bad faith, e.g. intent to gain profit from the goodwill of trademark or trade name inherently belonging to someone else.
Furthermore, Domain Name is per se not an object of intellectual property rights protectable like trademark or trade name under the countries’ intellectual property laws. Therefore, failure to register trademark-based domain name, which had been earlier appropriated by cybersquatters, has kicked off legal debates between the trademark holders and the cybersquatters.
Domain Name.VN Dispute Resolution Policy
In Vietnam, for the years of 2000s, domain name disputes happened and trended to be more incrseasing, however, since no UDRP for domain name .VN is issued by Vietnam’s authority, thus almost disputes are either still pending or are not thoroughly handled. Method of conciliation among the related parties for domain name dipuste resolution is mainly recommended by VNNIC.
In 2006, Domain Name is the one of subject matters regulated by the 2006 Law on Information Technology, thereby, pursuant to Section 76, a Domain Name .VN dispute may be settled by one of the three routes:
(a) Conciliation between complainant and respondent; or
(b) Through arbitration; or
(c) Initiating a lawsuit with a competent court.
Not until December 24, 2008, had the legal guideline for Domain Name .VN disputes resolution policy provided in the the 2006 Law on Information Technology been issued by Circular No. 10/2008/TT-BTTTT (“Circular 10”). The Domain Name .VN disputes resolution policy, which is basically based on the UDRP, requires that 3 conditions be satisfied to successufully cancel or forcedly transfer a disputed domain name .VN:
(a) Domain Name is identical with or confusingly similar to the complainant’s trade name; identical with or confusingly similar to trademark, service mark to which the complainant has the right and legal interest; and
(b) Respondent has neither right nor legal interest relating to such domain name; and
(c) Domain name is used by respondent in a bath faith.
Notwithstanding the Law on Information Technology and guidelines thereof, in comformity with its member obligation of effective protection against unfair competition set forth at Article 10bis of the Paris Convention, some such IPR-related unfair-competition-deemed acts as registering or possessing the right to use or using domain names identical with, or confusingly similar to, protected trade names or marks of others, or geographical indications without having the right to use, for the purpose of possessing such domain name, benefiting from or prejudicing the reputation and popularity of the respective mark, trade name or geographical indication are introduced Section 130 of the 2005 Law on Intellectual Property as revised in 2009.
Can recovery of a Domain Name.VN be administratively enforced?
Although Domain Name is itself not an subject matter protectable under the 2005 Law on Intellectual Property as amended, acts such as registering or possessing the right to use or using domain names identical with, or confusingly similar to, protected trade names or marks of others, or geographical indications without having the right to use, for the purpose of possessing such domain name, benefiting from or prejudicing the reputation and popularity of the respective mark, trade name or geographical indication as set out in Section 130.1(d) thereof may be deemed unfair competition ones and subject to an administrative penalty.
According to Article 11 of Circular 37/2011/TT-BKHCN dated December 27 2011 promulgated by Ministry of Science and Technology (MoST) providing guidance and clarification of Section 130 of the IP Law, IPR holder requesting the settlement of the act of registering for holding the right to use or using domain names which is regarded as an act of unfair competition is obliged to present the following evidences:
a) IPR holder has used a mark, geographical indication or trade name in a widespread and stable manner, of which reputation or prestige pertaining to products/services bearing those brands has been known by public consumers in Vietnam. (Substantiated proofs may comprise: information on advertisement, marketing, display and exhibition; sales; quantity of products sold; system of distribution agents, joint ventures and associations; investment scale; evaluations of state agencies and the mass media, consumer picks and other information showing the well-known status and reputation of the business entity, goods or services bearing such mark, geographical indication or trade name in its business activities in Vietnam);
(b) The accused party has used the domain name on the Internet for advertisement or introduction of products, offer for sale or sale of identical, similar or relevant goods or services, causing harm to the reputation or material interests of the holder of protected mark, trade name or geographical indication.
Moreover, the accused party continues to use a misleading mark, trade name or geographical indication through such domain name despite having been notified and offered by the owner of such mark, trade name or geographical indication to reach agreement on reasonable conditions for such use, to which he does not consent.
(c) The accused party has registered but failed to activate within one year the domain name with wordings identical to a mark, trade name or geographical indication which is in widespread use and widely used and reputable in Vietnam and there is also a ground to believe that he has registered for holding the right to use the domain name only for resale for profits or to prevent IPR holder of such protected mark, trade name or geographical indication from registering the domain name, despite having been notified and offered by the industrial property rights holder to reach agreement on reasonable conditions for such use, to which he does not consent;
(d) The accused party has no rights and legitimate interests related to the protected mark, geographical indication or trade name of the IPR holder.
The Standstill of Laws Conflict already Settled
There is no administrative measure included in Law on Information Technology (Section 76) while the availability of the same in the Law on Intellectual Property (Section 130) have generated a standstill by reason of conflict of laws during the enforcement of domain name revocation decisions. Particularly, regardless of a number of MoST Chief Inspectorates’ administrative penalty valid decisions on cancellation or forcibly transferring of domain name as a result of a Section 130 unfair competition infringement, VNNIC persists in keeping its position of refusal of enforcement because it assumes that no administrative measure is available under Section 76 of the Law on Information and Technology.
Coming under fire for their self-opinion by MoST, IPR holders and even though the Office of Government, as the first time VNNIC unwillingly accepted to execute the revocation of AMWAY2U.VN at the request of Alticor, a U.S company, based on MoST’s decision on revocation of the same domain name while giving Alticor a five-day priority right to register it after the revocation by VNNIC. With such landmark domain name enforcement, it is entirely believed that the recovery of domain name via administrative measure preferably chosed by IPR since it is less costly would be actually taken increasingly in coming years.