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How to solve dispute between Domain name and Trademark in Vietnam
(Ngày đăng: 2014-07-07)

 

HOW TO SOLVE DISPUTE BETWEEN

DOMAIN NAME AND TRADEMARK IN VIETNAM?

 

Domain name is not less value than a reputable Brand name

To date, and according to Guinness World Records, the most expensive domain name sales on record as of 2004 were:

  • Business.com for $7.5 million in December 1999
  • AsSeenOnTv.com for $5.1 million in January 2000
  • Altavista.com for $3.3 million in August 1998
  • Wine.com for $2.9 million in September 1999
  • CreditCards.com for $2.75 million in July 2004
  • Autos.com for $2.2 million in December 1999

What is a Domain name?

Domain names are the ones used to locate address on the internet. The Internet is comprised a network of thousands of independent networks, containing several million host computers that provide information services. Internet users who wish to access a particular Internet host computer to obtain or exchange information (e.g., e-mail, computer programs, images, music) must know its unique site address in order to make a connection.

The address of a host is shown by a numeric "IP" (also known as Internet Protocol) address. For example: the IP of the US giant corporation for information search services on the internet – GOOGLE INC is 209.85.129.18. The representation of IP in numberic chain makes it diffficult for users to memorize, hence, one has thought of a name in replace of such IP. Now we take the example of GOOGLE.COM, users only need to memorize the domain of GOOGLE.COM without referring to the numberic IP as 209.85.129.18 since on each Internet host resides a conversion table that automatically converts the mnemonic Domain name as GOOGLE.COM into the corresponding numberic address as 209.85.129.18.

Categories of Domain name and its Structure

Domain name consists of generic top level domain abbreviated as gTLD or also known as “international domain” (for example: .COM) and country code Top Level Domain, abbreviated as ccTLD or also known “national domain” (ex: .VN for Vietnam, .SG for Singapore, .JP for Japan, .CN for China).

Beneath gTLD or ccTLD is lower-ranking Domain names for identifying a particular IP address.  For examples:

2nd level Domain name: bross.vn

3rd level Domain name: trungnguyen.com.vn

4th level Domain name: trade.garco10.com.vn

Subject to the operational nature of an applicant, gTLD or ccTLD is classified into various industries. For example: .COM/.BIZ used for individual or organization engaging in business; .EDU for those involving training and education; .GOV.VN for those State bodies in the center and localities; .NET.VN for those taking part in internet and other internet-related services.

Why must get a Domain name registered?

According to the world’s common principle, Domain name shall be registered only if it meets the two requirements: uniqueness and first come – first served. So, to own a Domain name, you must register it as soon as possible.

As being used to localize IP address on the internet, in replace of a hard memorably numberic serial chain, Domain name has become excellent information exchange tool and advertisement in a such nowadays world of business. Consequently, Domain name is considered one of the highly valueable resouces of every enterprises or every countries.

Domain name Disputes are not an insignificant issues!

Failure to register its domain name .VN, the Domain name ebay.com.vn of Ebay Inc having address at 2145 Hamilton Avenue San Jose, United States of America – a world’s famous company for online goods aution services, was granted in the name of Moc My Company Limited  (changed as Alo Service and Trading Company Limited). The dispute of the domain name ebay.com.vn between Ebay Inc. and Alo Service and Trading Company Limited lasting for over 2 years has not been concluded yet.

IBM (abbreviation for International Business Machines Corporation) is the world’s well-known brand and is a reputable and trustworthy multinational company pertaining to computer and computer-related services. Also failure to register, IMB lost its Domain name as ibm.com.vn whereas such Domain name was ownership of Mr. Ly Gia Khang on August 28, 2003.

Another case is the dispute Domain Names toyotavn.vn, camry.vn and innova.vn among Toyota Vietnam Company với INGAS Company, Kim Long Investment and Consultancy Company Ltd which started since November 4, 2006 has not yet been finalized.

The above examples indicate that domain name disputes are not tiny matters, but they are apparently big concerns in business. Domain name dispute is the one among subjects relating to the ownership status of a domain name. Other categories of domain name dispute may be also happened among applicant for domain name, registrar or the State’s domain name  management bodies concerning claims for grant or for refusal of grant of a domain name.

Causes led to Domain name Disputes

An enterprise may commonly use its housemark or brands for a kind of its product as a domain name because on the one hand such use will help its clients easily remember and not confuse other competitors’ products, on the other hand this helps the enterprise keep advertising and increasing its brand equity through an Internet-based consistent brand identity system.

As above said registration of a domain name will be succeeded provided that the conditions of uniqueness and first come – first served are satisfied. This means that the registrant shall not carry out any examination to specify whether proposed domain name may cause any likelihood of confusion with other subjects’ brands or trademarks. It can be said that this is an in-depth cause increasingly leading to dispute and conflict between enterprises around the matter of domain name.

Another imaginable reason is that some subjects taking advantages of easy domain name grant princple and of careless of genuine subjects as well, to promptly appropriate trademarks, tradenames, brands or copyrighted reputable characters to get them registered in their names. The purpose can be identified as follows:

(i)             To prevent the rights and legal interests of the genuine owner having brand, tradename or trademark, and/or

(ii)            To speculate domain name for the purpose of selling, renting or otherwise transferring the domain name registration to the genuine owner for valuable consideration in excess of the domain name registrant’s out-of-pocket costs, and/or

(iii)           To unfaithfully and unhealthily advertise information relating to the domain name for the purpose of unfair competition or bad faith conduct.

Domain name Dispute Resolution

In the global context, gTLD domain name disputes, especially .COM, are usually settled by the Rules Uniform Domain Name Dispute Resolution Policy (“UDRP”) built and issued by the Internet Corporation for Assigned Names and Numbers (“ICANN”) in collaboration with the World Intellectual Property (“WIPO”). This policy recommends related parties to agree to be resolved the dispute by one of the two alternative methods: Alternative Dispute Resolution (ARD) or Arbitration.

This UDRP is conducted based on the priciple whereby domain name management organization empowers a qualified dispute resolution body in an arbitration manner. Where a judgment is made, the arbitration body shall apply UDRP to finalized the domain name dispute. Subsequently, domain name management organization will follow the arbitrator’s judgement.

In Vietnam, for the years of 2000s, domain name disputes happened and trended to be more incrseasing, however, no UNRP for domain name .VN is issued by Vietnam’s authority, thus, almost disputes are either pending or are not thoroughly handled. Dipuste resolution methods are mainly recommended by VNNIC – Ministry of Information and Communation – as Vietnam authority for .VN domain name grant and management are to be conciliated by parties.

Until the Law on Intellectual Property was born and was effect into force as of July 1, 2006, some such 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, tradename or geographical indication shall be considered unfair competition acts as provided in article 30 thereof.

Domain name disputes are, nevertheless, the complicated ones so they need to be governed by separate regulations which enable to thoroughly solve such matter in arbitration or court manner. Referring to the world’s domain name dispute resolution practices, recently, the Ministry of Information and Communication has issued Circular No. 10/2008/TT-BTTTT dated December 24, 2008 on .VN domain name dispute resolution policy  (“Circular No. 10/2008”) in order to provide for the implementation of Decree No. 97/2008/ND-CP of August 28, 2008 of the Goverment regarding management, provision, use of internet services and internet-based electric information services; and the Law on Informatic Technology dated June 29, 2006. This is the first time Vietnam promulgated an officially particular policy to .VN domain name dispute resolution. As provided, disputed parties may choose one of the 3 resolution modes: conciliation, arbitration or court.

The legal grounds to settle disputes as provided by Circular No. 10/2008, apart from compliance of civil or arbitration proceedings, comprise required 3 conditions:

(i)      Domain name is identical with or confusingly similar to the complainant’s tradename; identical with or confusingly similar to trademark, servicemark to which the complainant has the right and legal interest;

(ii)     Respondent has neither right nor legal interest relating to such domain name.

(iii)    Domain name is used by respondent in a bath faith.

Such acts as renting, transferring domain name to complainant’s competitors for the purpose of one’s own benefit or illegal profit; or possessing, preventing the owner of tradenames, trademarks from using or registering those trademarks or tradenames respective to domain name; or prejudicing the reputation of the complainant, precluding the complainant’s business activities or causing confusion, losing public’s trust to the complainant’s tradename and trademark are all considered using domain name in a bad faith.

Respondent shall be considered having the right and legal interest relating to domain name if one of the following requirements is met: Used or to prove with obvious evidence that he/she is intending to use domain name relating to goods/services which shall be sold or advertised for sale before the dispute happened; or such domain name has been known to public even though he/she has no right to trademark, tradename; or he or she is legally using domain name either not relating to commercial purpose or justifiably, or not leading public to misundertand or confuse the complainant’s tradename or trademark.

The .VN domain name registrar and VNNIC based on a judgement or decision being full effect made by the court or arbitrator shall conduct one of the following actions:

(i)            Withdraw domain name to prioritize the complainant to register, or to keep unchanged the status of domain name;

(ii)           Conduct other decisions relating to withdrawal, hanging, holding the disputed domain name for a prescribed time limit.

(iii)          During the dispute resolution, domain name being disputed shall be keep unchanged, neither be sent back, withdrawn, converted registrar nor changed as new organization, individual.

(iv)          In the event of successful conciliation minute, arbitrator’s award or court’s judgement being into effect where specified the disputed domain name shall be withdrawn so that the complainant is entitled to register and use then the complainant has the priority to register it within ten (10) consecutive days. Upon expiry of such time limited, the domain name shall be freely granted to any interested party.

Recommendations

Domain name has been recognized to be one of the most effective marketing tools in such nowadays a “flat world”, of which presence is considered not less value than a good brand affixed on package of goods or services. Domain name disputes, which may be far from thoroughly settled without much costs and time, will be absolutely preventable if you take the initiative to register it as soon as possible.  

By Le Quang Vinh

BROSS & Partners

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