Trademark conflicting with domain name
According to ICANN, every computer on the Internet has a unique address that consists of a rather complicated string of numbers called an “IP address” (IP stands for “Internet Protocol”). Since IP addresses are difficult to remember, a domain name (part of the domain name system) makes it easier to use the Internet by allowing a familiar string of letters to be used instead of the obscure IP address.
Unlike trademark ownership which can take up to 2 years due to the requirement to review 2 terms of protection, registering a domain name only takes a few hours due to the non-review requirement as long as that domain name is self-identified as available in the WHOIS tool. In other words, the acquisition of any domain name including the national domain name “.vn” satisfies only 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 promoting and marketing products on the Internet. These names are duly brand names or registered trademarks of a company, for example, the trademark “Vinamilk” is used to register a ccTLD”milk wine.com.vn” or brand name “Trung Nguyen Legend” used as a gTLD”trungnguyenlegend.com”. Where a trademark owner is not the actual registrant of the domain name, there can usually be a legal dispute between them over a claim of who is entitled to the disputed domain name.
When the trademark cannot prevail over a domain name
According to commercial judgment of first instance no. 1424/2017/KDTM-ST of the Ho Chi Minh City People’s Court, the plaintiff sued the defendant, accusing the defendant’s registration and use of the domain name “hc.com.vn” are acts of unfair competition in violation of intellectual property law. Specifically, the plaintiff argued that the domain name “hc.com.vn” is similar to its trademarks “HC simply & device” and “HC & device” in Vietnam registered under the registration numbers. 100288 and 100289. Moreover, such a domain name is likely to be confused with the business name of the applicant. For this reason, the plaintiff argued that the registration, use and sale of the domain name by the defendant in exchange for 190 million dong (approximately $7,500) constituted acts of unfair competition and should be considered bad faith.
Counter-arguing the claims of the plaintiff, the defendant stated that its domain name “hc.com.vn” was registered on June 7, 2017. Its website only provides commercial information in the field of CCTV cameras, anti-theft devices; neither the content resembles the applicant’s website, nor the information on financial services and financial advice included therein, so that its domain name does not cause any probable confusion or involve any prohibited act of unfair competition.
Regarding trademark infringement, based on the expert opinion of VNIPO whereas “HC” components under trademarks used for classes 35 & 36 including financial services are not exclusively protected in Vietnam, the Court held that the disputed domain name used by the defendant, although containing the “hc” element identical to the plaintiff’s trademark, did not infringe the plaintiff’s protected trademarks. With respect to the infringement of the plaintiff’s trade name, the Court found that there was no legal basis to determine the infringement of the plaintiff’s trade name since the defendant’s camera company is different from the financial department of the applicant. With respect to the plaintiff’s allegation against the defendant’s offer for sale of the disputed domain names with the aim of making illicit profits, the Court found that the domain name is not likely to be prohibited assignment when the defendant’s domain name was registered in 2015 and used for commercial purposes. Consequently, the Court decided that there was no evidence to prove that the defendant’s registration, the use of the disputed domain name as well as the offer to sell should be considered as illicit gain.