Domain Name and Four Reasons for .VN Domain Name Disputes
Simply put, a domain name is a text name used to replace an Internet Protocol (IP) address which is inherently a hard-to-remember series of numbers. A domain name, belonging to the Domain Name System (DNS), has the function of identifying a particular computer on the Internet, and can be “translated” into a corresponding IP address and vice versa. Therefore, a short and easy-to-remember name is usually adopted as the domain name, for example, the trademark “Vinamilk” as a ccTLD: “milk wine.com.vn” or brand name “Trung Nguyen Legend” as a gTLD: “trungnguyenlegend.com” to promote and advertise the products in cyberspace. Since trademarks are often registered as domain names, this usually leads to conflicts of interest between domain name holders and trademark holders.
Currently, although there are no statistics on the number of “.VN” domain name disputes seen in the newspapers, it is undeniable that domain name disputes are on the rise. . The vast majority of domain name disputes are those that arise between the owner of a registered trademark and the registrant of a domain name. Thus, trademark holders usually take legal action or ask a competent authority to deal with the act of unfair competition of the domain name holder through administrative measures due to an infringement of intellectual property law. .
Practice has shown that there are four main causes of conflicts between domain names and intellectual property rights (including trademarks):
(a) It takes very little time, simply and at low cost to register or own a domain name. For example: one year registration fee for an international domain name “.com”: 199,000 VND (about $8), domestic domain name “.vn”: 550,000 VND (about $26)
(b) Domain name speculation is a lucrative industry since domain names can be resold for money tens or even hundreds of times the cost spent. For example, the international domain name “Viettel.com” was purchased in 1997 by an American individual, and in 2011 it was on sale for $1.5 million.; or before Samsung filed a lawsuit in a Vietnamese court, the domestic domain names “samsungmobile.com.vn” and “samsungmobile.vn” were offered for 218 million VND; or another case is that Bkav had to spend 2.3 billion VND ($100,000) to buy back the domain name “bkav.com” registered in advance by an American company before 2001.
c) The misuse of others’ trademarks to register domain names tends to increase rapidly because registering a domain name does not require any examination except for the rules of “uniqueness” and ” first come, first served”.
(d) There is still no legislative provision included in both the Intellectual Property Law and the Information Technology Law that can completely resolve the conflicting relationship between domain names (subject to the laws on information technology) and trademarks (subject to intellectual property laws).
Legal bases for handling the dispute relating to the “.VN” domain name
As a general rule, the registration or use of the national domain name “.vn” must not affect the rights and legitimate interests of other organizations and individuals that existed before its date of registration. Accordingly, a trademark holder (plaintiff) may bring a civil action in a court of competent jurisdiction or initiate arbitration proceedings against a domain name holder (defendant), if both parties have entered into an arbitration agreement, for ask the court or arbitration center (eg VIAC) to issue a decision on the forced recall of the disputed domain name.
To have a dispute prevail over a domain name (the disputed domain name is forcibly returned), the plaintiff must prove the following reasons:
(a) The disputed domain name is identical or similar to the claimant’s name; identical or confusingly similar to a trademark or service mark in which the Applicant has legitimate rights or interests;
(b) The Respondent has no right or legitimate interest related to this disputed domain name
(c) Respondent leases or transfers the disputed domain name to plaintiff who is the owner of the name, trademark or service mark that is identical or confusingly similar to the disputed domain name; leases or transfer to applicant’s competitor for personal benefit or illicit gain.
The registration, the possession of the right to use a national “.vn” domain name would be considered an act of unfair competition in violation of intellectual property law if the holder of a trademark, a name trademark or a protected geographical indication has met the following conditions:
(1) A trademark, trade name or geographical indication which is protected must be widely and regularly used in lawful commercial activities and known to consumers for its prestige and reputation; and
(2) A disputed domain name: (a) contains a sequence of characters identical or similar to a protected trademark, trade name or geographical indication; or (b) or a disputed domain is widely used for advertising, introducing products, offering for sale, goods or services that are identical, similar or relevant on the website to which the disputed domain name resolves ; (c) creates confusion, or takes advantage of and causes spiritual or material loss to the owner of such trademark, trade name or geographical indication.