Is the Draft Law’s Article 130(1)(d) New Proposal to Surmount
the Conflict Between Domain Name and Intellectual Property Right Feasible?
The Draft Law amending and supplementing a number of articles of the 2005 Intellectual Property Law (“Draft Law”) only adds the element "with bad intention" (the same as “bad faith” concept) to Article 130(1)(d) of the current IP Law in order to determine when the act of registration, possession or use of a domain name shall be considered as an unfair competition acts and shall be governed by the IP Law. The domain name has been a controversial issue for a long time between the Ministry of Science and Technology and Ministry of Information and Communications due to legal conflicts between the IP Law and Law on Information Technology.
Adding the phrase "with bad intention" to Article 130(1)(d), would be not sufficient, in our opinion, to completely resolve this conflict. There are currently 2 domain name dispute resolution policies widely adopted in the world, firstly, the Uniform Domain Name Resolution Policy (UDRP), and secondly, the EU. Alternative Dispute Resolution Rules (.eu ADR).
In order to be able to cancel or force the transfer of domain name, if a UDRP claim is adopted, the complainant must always satisfy all three conditions at the same time: (a) the domain name registered by the domain name registrant is identical or confusingly similar to a trademark or service mark in which the complainant (the person or entity bringing the complaint) has rights; and (b) the domain name registrant has no rights or legitimate interests in respect of the domain name in question; and (iii) the domain name has been registered and is being used in bad faith
Nevertheless, according to ADR, in order to prevail an eu. domain name claim, ADR only requires that 2 conditions (a) & (b) above be satisfied while condition (c) is completely optional.
The .vn domain name dispute resolution policy suggested by the VNNIC that is available in Article 76 of the Law Information Technology is to follow the UDRP administered by the WIPO and ICANN while it is not clear that which approach in Article 130(1)(d) is being supplemented: UDRP or ADR?. This is the cause of the debate and conflict between the IP Law and the Law on Information Technology.
For the reason, should the Drafting Committee consider adding more amendment options to point d, paragraph 1, Article 130?. In particular, we suggest that it is possible to choose: (a) to legislate three conditions of UDRP into point d, paragraph 1, article 130; or (b) to prioritize the choice of applicable law, for example, it can be added to Clause 2, Article 5 of the IP Law as follows:
“In case the domain name subject to a dispute or subject to an administrative violation is determined to be identical with or confusingly similar to, a protected industrial property rights in Vietnam, related parties have the right to request competent agencies to apply the provisions of this IP Law to settle”.
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