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Domain names and causes of disputes between domain name and intellectual property rights

Domain name is an important tool to help customers identify the commercial origin of a business or a product on the internet environment. It is also because of its function of identifying badge of origin that domain names have become one of subjects causing more conflicts with intellectual property rights, especially with trademarks, brands, trade names, geographical indications already earlier existed.

It is internationally recognized that the principle of domain name registration is "unique" and "first come, first served", therefore, more and more individuals or entities have abused such easy registration principle by pre-registering a series of domain names that are identical or confusingly similar to protected trademarks or intellectual property rights of others. They, by owning those domain names, often offer registered domain names to trademark genuine owners or stakeholders in exchange of illicit profit (may be up to million dollar), or directly use those domain names to make the public mistakenly believe that they and genuine owner of that trademark or brand have connection with each other. This is duly one of the basic causes for occurrence of dispute between domain name registrant and trademark or brand holder.

International domain names, also known as top-level domain names (TLD), often end with .COM, .BIZ, .NET, etc. Meanwhile, top-level national domain name, or also called as country-code top-level domain name (ccTLD), generally ends with a 2-letter country code. For example, ccTLD of Vietnam is .VN, Japan is .JP, China: .CN, etc. Thus, according to the general principle, all natural persons, legal persons, whether bearing Vietnamese or foreign nationality, can register international domain name and/or national domain name as long as no identical domain name has been registered before.

International domain names are now under the control of ICANN[1] – a non-profit international organization responsible for globally ensuring a stable and seamless internet environment.

To solve the phenomenon of abuse of domain name allocation policies as easily as above – the phenomenon is considered unhealthy, negatively affecting the norms and healthy practices of international trade, hindering legitimate rights and interests of intellectual property right holders, ICANN collaborated with the World Intellectual Property Organization (WIPO) to issue a Uniform Domain Name Dispute Resolution Policy (UDRP). Under UDRP, intellectual property rights holders can force a domain name registrar to cancel a domain name that has been granted or forced to transfer a disputed domain name if the owner of a protected trademark has proved that the disputed domain name has met all of the following 3 conditions:

(1)       the registrant’s domain name is identical or confusingly similar to a trademark or service mark in which the trademark holder has rights; và

(2)       the registrant has no rights or legitimate interests in respect of the domain name; and

(3)       the registrant’s domain name has been registered and is being used in bad faith.

It is worth noting that even if either of the parties to an international domain name dispute has Vietnamese nationality, it is impossible to apply Vietnamese law because Vietnam does not have jurisdiction over international domain name dispute. UDRP-based international domain name dispute is conducted through ICANN's authorizing one of the six accredited Dispute Solution Service Provider, comprising: The Arab Center for Dispute Resolution (ACDR), Asian Domain Name Dispute Resolution Center (ADNDRC), Canadian International Internet Dispute Resolution Center (CIIDRC) [2], the Czech Arbitration Center for Internet Dispute, National Arbitration Forum and WIPO Arbitration and Mediation Center. According to our observations, WIPO Arbitration and Mediation Center is both the most reputable domain name dispute resolution service provider among the 6 providers. Bross & Partners successfully represented a Vietnamese customer to forcibly transfer the domain name honghagas.com at WIPO in Case No. D2010-0374.

Evidence, arguments in support of three mandatory elements of UDRP and the WIPO’s arbitral proceedings

First UDRP element (a disputed domain name is identical or confusingly similar to a trade mark or service mark in which the trademark holder has rights) may be substantiated based on the assessment of evidence relating to:

1. (i)         Comparing composition and structure of disputed domain name to that of trade mark or service mark to determine the possibility of internet users being mistaken;
2. (ii)        Determining the uniqueness of trademark by itself, namely whether the trademark is highly distinctive or weakly distinguishable;
3. (iii)       Proof of registered trademark, use and duration of using the trademark by the right holder (regardless of country in which the trademark is registered), proof of reputation, geographical area, time of use of the trademark.

Second UDRP element (the registrant has no rights or legitimate interests in respect of disputed domain name) may be proved through:

1. Prior to appropriating disputed domain name, cybersquatter has received a warning from the trademark owner, cybersquatter cannot prove that he/she has used or prepared to use disputed domain name honestly to offer goods or services; or
2. Cybersquatter of disputed domain name is not widely known through that domain name; or
3. Cybersquatter cannot prove that he/she is using non-commercial purposes, does not intend to profit for the purpose of destroying the reputation of trademark.  

Third UDRP element (disputed domain name has been registered and is being used in bad faith) is deemed satisfied if any one of the following non-exclusive scenarios is found:

(i)         It is believable that the cybersquatter who has registered disputed domain name with the main purpose is to resell, lease or transfer to the real owner of that domain name in order to recover the great material value more than his/her out-of-pocket; or

(ii)        It is grounded to believe that the cybersquatter who has registered disputed domain name is to prevent the trademark owner from registering or using the disputed domain name; or

(iii)       there is ground to confirm that the cybersquatter who has registered disputed domain name is basically to disturb the competitors' business activities; or

(iv)       the cybersquatter who has registered disputed domain name has intention to deliberately attract internet users to access his/her website by deliberately making the public mistakenly believe that the origins of his/her website or commerce with trademark/brand owner is one.

Timelime for resolving a disputed domain name is fast (much shorter than a civil lawsuit in Vietnam). In our experience, for example, a petition filed with WIPO will generally be decided within 2 months only (without the presence of litigants), whose arbitration proceedings are as follows:

(i)         Within 5 working days of the right holder filing a complaint, paying arbitration fees and receipts confirming that EMS delivery has been served, WIPO will notify by email to both the right holder and cybersquatter notifying its acceptance of complaint;

(ii)        The cybersquatter who has registered disputed domain name has rights and obligations, within 20 days of WIPO’s notice of acceptance of complaint, to send his/her written rebuttal to both WIPO and the right holder;

4. WIPO will appoint arbitration on the 25th day of the proceedings and notify arbitrator appointment to both the right holder and the cybersquatter;
5. In a period of 14 days since the date of arbitration appointment by WIPO, an administrative panel comprising chosen panelist(s) shall discuss, determine carefully the complaint by the right hoder and counter-arguments by the cybersquatter;
6. By the 44th day of the proceedings, the panelist will issue its judgment under which disputed domain name must be canceled, transferred to the right holder, or the complaint denied.
7. By the 54^th day of the proceedings (upon the expiration of 10 working days[3] from the date of decision by the panelist neither of the parties: the right holder or cybersquatter has delivered WIPO a written document testifying that such decision subject to a lawsuit had been accepted by a local then the decision of WIPO officially takes effect and cybersquatter (registrant) is obliged to cancel or to be transferred back to the right holder.  

Bross & Partners successfully represent a Vietnamese customer to forcibly transfer back the domain name honghagas.com at the WIPO Mediation and Arbitration Center in Case No. D2010-0374. Details of this judgment can be viewed at: https://www.wipo.int/amc/en/domains/decisions/text/2010/d2010-0374.

Should you have any query, please get in touch with us at vinh@bross.vn or 84-903 287 057

Bross & Partners, a renowned and qualified Patent, Design, Trademark and Copyright agent of Vietnam, constantly ranked and recommended by the Managing Intellectual Property (MIP), World Trademark Review (WTR), Legal 500 Asia Pacific, AsiaLaw Profiles, Asia IP and Asian Legal Business, is providing clients all over the world with the reliable, affordable contentious and non-contentious IP services including preparing Vietnamese translation of PCT applications and entering the Vietnamese national phase, filing, prosecution, enforcement, anti-counterfeiting, litigation and domain name matters.