Domain Dispute Settlement Under Vietnamese Laws: An Overview Of Conflicts

Therefore, the violated party may bring the case to competent courts. For this purpose, the violated party must prove following basis for his claim:^[1]

a) The domain name under dispute is identical or similar to the domain name of the plaintiff; identical or similar to a trademark or brand name

b) The defendant has no lawful right or interest related to the domain name;

c) The defendant leases out or transfer the domain name to the plaintiff who owns the brand name or trademark that is identical or confusingly similar to the domain name; leases out or transfer the domain name to the competitor of the plaintiff for self-seeking purposes or for illicit profits.

d) The defendant appropriates the domain or prevents the plaintiff who owns the brand name or trademark that from registering the corresponding domain name for unhealthy competition;

dd) The defendant uses the domain name to tarnish the reputation of the plaintiff, obstruct the business of the plaintiff, or cause confusion and destroy the trust of the public in the brand name or trademark of the plaintiff for unhealthy competition.

e) Other cases in which the defendant is proved that his or her using the domain name violates lawful rights and interests of the plaintiff.

In most cases, if disputing parties cannot reach a mutual agreement to settle the dispute, competent administrative authority that is in charge of granting and managing national domain names only recalls the disputing domain on the request of a valid judgement or arbitrational award.

It is worth noting that the domain name is not one of the intellectual properties like trade mark or trade name. Nonetheless, the intellectual property legal framework still governs some aspects in registering and using domain name, especially domain uses which may violate intellectual property rights, namely trademark or tradename uses. Accordingly, point d, section 1 of Article 130 Vietnamese Law on Intellectual property 2005 amended on 2009 clearly states that 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, trade name or geographical indication shall be deemed to be an act of unfair competition. Respect to this, current laws of Vietnam already provides parties with remedies for unfair competition acts on industrial property area. Pursuant to the Article 14 of the Decree 99/2013/ND-CP, a person registering or appropriating the right to use or using domain names identical or confusingly similar to protected marks, geographical indications or trade names of other parties in order to appropriate domain names, taking advantage of or harming reputation of those marks, trade names or geographical indications may be fined from VND 5,000,000 and 20,000,000. Further, a violated party may require state authorities to enforce the remedies as changing the registrant of the disputing domain and transfer the disputing domain to the violated party.

The party requesting handling of the act of registering, appropriating domain name use right or using a domain name regarded as an act of unfair competition in industrial property must prove that he has used the mark, geographical indication or trade name in a public and stable manner and has its reputation as an industrial property rights holder and goods or services bearing such mark, geographical indication or trade name (possibly information on advertising, marketing, exhibition; sale turnover; number of products sold; system of distribution agents, joint ventures and associated parties; investment scale; appraisal by state agencies, the mass media, selection by consumers, and other information showing the reputation of the business entity; goods or services bearing such mark, geographical indication or trade name) known to consumers in Vietnam.^[2]

For the act of using a domain name regarded as an act of unfair competition in industrial property, the requesting party shall prove that the party requested to be handled has used the domain name on the Internet for advertising or introducing products, offering for sale identical, similar or related goods or services, causing damage to the reputation of or material damage to the owner of the protected mark, trade name or geographical indication; and the party requested to be handled continues to use the misleading mark, trade name or geographical indication through such domain name after being requested by the mark, trade name or geographical indication owner to stop using it.^[3]

For the act of registering or appropriating the domain name use right regarded as an act of unfair competition in industrial property: The requesting party shall prove that the party requested to be handled has registered but has not used the domain containing characters identical to a mark, trade name or geographical indication widely used and reputable in Vietnam; and there are grounds to believe that the party requested to be handled registers or appropriates the domain name use right only for resale to earn profits or to prevent the owner of the protected mark, trade name or geographical indication from registering a domain name.^[4] In practice, requiring to prove “the party requested to be handled registers or appropriates the domain name use right only for resale to earn profits or to prevent the owner of the protected mark, trade name or geographical indication from registering a domain name” is complicated task. Hence, in the cases of registered domain names that have not been used, process to recalling the domain name tends to be lasted for a long period.

Besides, the plaintiff also needs to convince that the defendant has no lawful rights to and interests from protected marks, geographical indications and trade names of the rights holder.

If you have any questions or require any additional information, please contact Apolat Legal – An International Law Firm in Viet Nam.

This article is for general information only and is not a substitute for legal advice.