Trademark vs. Domain name: Why a Vietnamese Court’s Ruling Stated That Offer for Sale of Domain Name to Trademark Holder is not Regarded Illicit Gain?

By Le Quang Vinh – Bross & Partners

Email: vinh@bross.vn

Trademark in Conflict with Domain Name

According to the ICANN, every computer on the Internet has a unique address that consists of a rather complicated string of numbers called "IP address" (IP stands for "Internet Protocol"). As IP addresses are hard to remember so a domain name (a part of Domain Name System) makes using the Internet easier by allowing a familiar string of letters to be used instead of the arcane IP address.

Unlike the ownership of a trademark that may take up to 2 years due to the requirement of examination of 2 conditions for protection,[1] domain name registration takes only a few hours because of non-requirement of examination as long as such domain name is identified by yourself as available in the WHOIS tool. In other words, acquisition of any domain name including national domain name “.vn” solely needs to satisfy 2 conditions: “uniqueness” and “first come, first served”.

Short, easy-to-remember and easy-to-read names are obviously often chosen as domain names for the purpose of product promotion and marketing on the Internet. Those names are duly brand names or trademarks of an enterprise, for instance, the trademark "Vinamilk" is used to register a ccTLD “vinamilk.com.vn” or brand name "Trung Nguyen Legend" used as a gTLD “trungnguyenlegend.com”. Where a trademark owner is not stimultaneously the domain name registrant, there may frequently occur a legal conflict between them around a claim of who has entitlement to the disputed domain name.[2]

When Trademark Cannot Prevail over a Domain Name

According to the first-instance commercial business judgment no. 1424/2017/KDTM-ST of the People's Court of Ho Chi Minh City, the plaintiff sued the defendant, accusing that the defendant’s registration and use of domain name “hc.com.vn”[3] are the unfair competition acts in violation with the IP Law. Specifically, the plaintiff argued that the domain name “hc.com.vn” is confusingly similar to his trademarks “HC simply & device” and “HC & device” in Vietnam registered under registration nos. 100288 and 100289. Moreover, such domain name has likelihood of confusion with the plaintiff’s trade name. For the reason, the plaintiff contended that the defendant’s registration, use and offering for sale of the domain name in exchange for 190 million dong (roughly $8,000) have constituted unfair competition acts as well as are to be considered as bad faith.

In counter-arguing the plaintiff's claims, the defendant stated that his domain name “hc.com.vn” was registered on June 7, 2017. His website only provides business information in the field of CCTV cameras, anti-theft devices; neither content resembles the plaintiff’s website, nor information on finance services and financial consultancy included therein, so his domain name does not cause any likely confusion and does not imply any prohibited unfair competition acts.

As far as trademark infringement is concerned, based on the VNIPO’s expert opinion[4] considering that the components “HC” under the registered trademarks used for classes 35 & 36 including financial services are not exclusively protected in Vietnam,[5] the Court held that the disputed domain name used by the defendant although containing the element “hc” identical with the plaintiff's trademark, it did not infringe upon the plaintiff's protected trademarks. In respect of the plaintiff’s trade name infringement, the Court concluded that no legal basis to determine the infringement of the plaintiff’s tradename since the defendant’s camera business is different from the plaintiff's financian service. As regards the plaintiff’s allegation against the defendant’s offering for sale of the disputed domain names for the purpose of making illicit profits, the Court found that the domain name is not subject to being prohibited from assignment while the defendant’s domain name was registered in 2015 and being used for business purpose. Therefore, the Court decided that there is no evidence to prove that the defendant’s registration, use of the disputed domain name as well as offer for sale shall be determined as illicit gain.

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

Should you have any query, please contact: vinh@bross.vn; mobile: 0903 287 057; Zalo: +84903287057; Skype: vinh.bross; Wechat: Vinhbross2603.