4 Causes of Domain Name Disputes and Legal Grounds

for Settling National Domain Name Disputes “.VN”

By Attorney Le Quang Vinh – Bross & Partners

Email: vinh@bross.vn

Domain Name and Four Reasons for Arising Domain Name Disputes “.VN”

Simply speaking, a domain name is a text name used to substitute an internet protocol (IP) address that is inherently a series of numbers which is hard to remember. A domain name, belonging to the Domain Name System (DNS), has a function to identify a particular computer on the internet, and can be “translated” into a corresponding IP address and vice versa. Therefore, a short and easy-to-remember name is commonly adopted as domain name, eg., the registered trademark “Vinamilk” as ccTLD: “vinamilk.com.vn” or the brand name “Trung Nguyen Legend” as gTLD: “trungnguyenlegend.com” to aim at product promotion and advertisement in the cyberspace.[1] Due to the fact that trademarks are often registered as domain names, it usually leads to conflicts of interest between domain name registrants and trademark holders.

Currently, although there is no statistics for the number of domain name disputes “.VN”, as seen from the newspapers, it is undeniable that domain name disputes are occurring more and more. The vast majority of domain name disputes are the ones arising between the owner of a registered trademark and the registrant of a domain name. Thereby, the trademark holders usually initiate a lawsuit or request a competent authority to handle the domain name registrant’s unfair competition act via administrative measures due to an infringement of IP Law.

Practice has shown that there are four main causes leading to disputes between domain names and intellectual property rights (especially trademarks):

(a)   It takes very little time, simply and with low cost to register or own a domain name. For example: 1-year registration fee for an international domain name “.com”: 199,000 VND (roughly $8), national domain name “.vn”: 550,000 VND (about $26)

(b)  Domain name speculation is a lucrative industry since the opportunity to resell domain names in exchange for money tens or even hundreds of times higher than the spent cost. For instance, the international domain name “Viettel.com” was purchased in 1997 by an American individual and in 2011 it was for sale for $1.5 million[2]; or before Samsung filed a lawsuit in a Vietnamese court, the national domain name “samsungmobile.com.vn” and “samsungmobile.vn” were offered for 218 million VND[3]; or another case is that Bkav had to spend 2.3 billion VND ($100,000) to redeem the domain name “bkav.com” early registered by an American company prior to 2001[4].

(c)   The abuse of taking others’ trademarks to register domain names tends to increase rapidly because domain name registration does not require any examination, except for the rules of "uniqueness" and "first come, first served".

(d)  There is still no statutory provision included in both Law on Intellectual Property and Law on Information Technology that can completely resolve the conflicting relationship between domain names (subject to the laws on information technology) and trademarks (subject to the laws on intellectual property).

Legal Bases for Dealing with Domain Name Dispute “.VN”

As a general rule, registering or using national domain name “.vn” must not infringe upon the lawful rights and interests of other organizations and individuals that existed before its registration date. Accordingly, a trademark holder (plaintiff) can bring a civil lawsuit to a competent court or initiate an arbitration proceeding against a domain name registrant (defendant), if both parties entered into an arbitration agreement, to request the court or arbitration center (eg. VIAC) to issue a ruling for forcibly recall the disputed domain name.

To prevail a domain name dispute (the disputed domain name is forcibly returned), the plaintiff must prove the following grounds:

(a)   The disputed domain name is identical or confusingly similar to the name of the plaintiff; identical or confusingly similar to a trade mark or service mark which the plaintiff has the legitimate rights or interests;

(b)  The defendant has no legitimate rights or interests related to that disputed domain name

(c)   The defendant leases or transfers the disputed domain name to the plaintiff who is the holder of the name, trademark, or service mark which is identical or confusingly similar to that disputed domain name; leases or transferring to the plaintiff’s competitor for the purpose of personal benefit or illicit gain.

Registering, possessing the right to use national domain name ".vn" would be considered as an unfair competition act in violation of intellectual property law if the stakeholder of protected trademark, trade name or geographical indication has met the following conditions:

(1) A trademark, trade name or geographical indication that is protected must be widely and stably used in lawful business activities and known to consumers for its prestige and reputation; and

(2) A disputed domain name: (a) contains a sequence of characters identical or confusingly similar to a protected trademark, trade name or geographical indication; or (b) or a disputed domain is widely used for advertisement, product introduction, offer for sales, of identical, similar or relevant goods or services on the website to which the disputed domain name resolves; (c) causes confusion, or takes advantage of and causes spiritual or material loss to the holder of such trademark, trade name or geographical indication.

Bross & Partners, an intellectual property company ranked First (Tier 1) by Legal 500 Asia Pacific, has experience in resolving complicated IP disputes including trademarks, copyrights, patents, plant varieties.

Please contact: vinh@bross.vn; mobile: 0903 287 057; Zalo: +84903287057; Skype: honor.bross; Wechat: Vinhbross2603.