The article titled: “Claiming a debt at the end of the year” from Lawyers Ho Tuong Vy, is published on Intellectual Property and Entertainment Law Committee Newsletter, October 2011.
According to the website of ABC News, the most expensive worldwide domain names in October 2010 were “Fund.com” valued at up to US$9.99m, “Porn.com” at US$9.5m, “Diamond.com” at US$7.5m or “Slots.com” at US$5.5m.  In Vietnam, a wealth of costly domain names have been registered based upon the names of famous people, this being a widespread trend in recent times.
It can be seen that not only have organizations and enterprises, but also individuals, registered domain names because of a diversity of benefits.
The first benefit is efficiency and economy. A domain name is a very productive promotional channel and capable of bringing in considerable turnover and reputational gains to organizations, enterprises, individuals, and their allied products and services. Taking a typical example, the Facebook company spent US48.5m for its ownership of the domain name “fb.com” with regard to which there was the likelihood of confusion with the domain name “fb.org” owned by the US Department of Agriculture. Accordingly, the domain name “fb.com” would be used for a new e-mail service launched in the market in 2011 by Facebook, namely a combination of SMS, message, chat and e-mail on the same interface. The Domain name “fb.com” would be utilised by millions of users for their mailboxes, and this use will help distinguish their accounts from those of the domain name “facebook.com” used by the employees of the Facebook. Obviously, in comparison to the asset value of US$50bn of Facebook, the amount spent is not significant but it is clearly intended that this investment would bring Facebook even more success and improved financial results.
The second benefit is the speed and extensive coverage connected with and offered by a domain name. With the support of computer technology and connected applications, people worldwide can instantly and quickly update with a few clicks of the mouse the latest information on enterprises, organizations and individuals inside and outside the country through their own domain names.
The third benefit relates to protection of intellectual property (IP) rights in respect of trade names, company names and trademarks of enterprises and organizations. In general, enterprises and organizations base their choices of domain names on their trade names or trademarks so that consumers may easily remember, link and search relevant information. For example, Lacoste Alligator SA is a company established in 1933 specializing in designing and manufacturing clothes and fashion accessories bearing the trademark “LACOSTE”. This company is the owner of numerous domain names containing its trademark such as “lacoste.com”, “lacoste.com.uk”, “lacoste.uk”, “lacoste.nl”, “lacoste.com.nl” and “lacoste.com.de”.
Thus, a domain name is now not only a type of internet resource of the country domain within which it is registered and not just a tool to identify the internet address of the server but also an asset as valuable as any other commonly-accepted class of asset.
The legal framework of Vietnam in respect of domain names
Some regulations in regard to domain name protection
A domain name registered in Vietnam may consist of Vietnamese national domain name ending “.vn” and a Vietnamese-language domain name. Accordingly, a domain name ending with the letters “.vn” is the country-code top-level domain name (cc TLD) in Vietnam. The following are the possible second-level domain names under a domain name ending with “.vn”, namely:
- second-level domain name (SLD) classified by non-sectors, and
- generic second-level domain name (gSLD) classified by sectors like “com.vn” and “biz.vn” for organizations and individuals involved in business and commercial activities, “edu.vn” for organizations and individuals involved in education and training, and “int.vn” for international organizations in Vietnam, etc.
Vietnamese-language domain names fall within the system of the Vietnamese national domain names ending “.vn” in which the letters creating this domain name are the letters described in the Vietnamese code table under the Vietnamese Standard 6909:2001 and the ones in the Vietnamese expandable code table under this standard.
The general principle for registration of domain names in Vietnam is “first come, first serve”. For a domain name to be registered, it must consist of not more than 63 letters; it may contain the letters from A to Z, numbers from 0 to 9, Vietnamese-language letters in the Vietnamese alphabet and all letters approved by the domain name server system on the internet; it may contain character “-” but must neither start nor end with this character; and may not start with characters “xn--”.
In addition to general principles, any such domain name must also comply with a wide variety of specific requirements. For example, the domain name must not include words which contravene national interests or which are unacceptable to the social ethics, lifestyle and customs of Vietnam, and must be serious in order to avoid any misunderstanding or distortion due to polyphonic and polysemantic issues or the non-use of accents in Vietnamese. Note that organizations and individuals nationwide and worldwide are entitled to register and use SLD under the Vietnamese national domain name ending “.vn” (except gSLD and SLD by administrative boundaries) and third-level domain names under gSLD.
Registration procedures for domain names under the Vietnamese national domain name ending “.vn” require dealing with the Domain Name Registries of Vietnam and details can be found at www.nhadangky.vn. Briefly, the domain name applicant may register directly with the these Registries or register online via the internet.
As for international domain names, the applicable law of Vietnam permits organizations and individuals operating legally in Vietnam to use these domain names to set up their electronic information pages but they must inform the Ministry of Information and Communication of such use at www.thongbaotenmien.vn”.
Regulations governing domain name dispute settlement
The settlement of disputes in relation to registration and use of domain names in the Vietnamese national domain ending with “.vn” must comply with the Law on Information Technology and takes three forms:
- through negotiation and conciliation;
- through arbitration; or
- legal proceedings before a court.
Dispute resolution through negotiation and conciliation
The parties may carry out conciliation prior to or during the course of proceedings as stipulated by the law of Vietnam. Where parties reach an agreement on settlement of a dispute, they are required to prepare minutes in respect of the successful conciliation and dispatch these minutes to the relevant Domain Name Registry or Vietnam National Internet Center (VNNIC) for settlement of the dispute in respect of the disputed domain name.
Where conciliation is conducted during the proceedings, upon the expiry of the seven-day time limit after the making of the minutes on successful conciliation, if none of the parties resile from the agreement reached, the judge who presides over the conciliation session or another judge who has been assigned by the court’s chief judge must issue a decision recognizing the agreement of the parties. Within five working days after the issuance of the decision to recognize the agreement, the court must deliver the decision to the parties involved and the procuracy of the same level.
Dispute resolution by the arbitration
Aside from the first method, the parties may choose arbitration as a means of solving their domain name dispute arising from commercial activities at the center of arbitration in accordance with the law (the list of arbitration authorities is referred to at http://tranhchaptenmien.vn).
In terms of the legal provisions governing arbitration in Vietnam, for a dispute to be resolved by arbitration, an agreement by the parties must be available before or after the dispute arises. In the experience of this author, the parties to a domain name dispute often have more difficulty with regard to the selection of arbitration than is the case where there is another type of commercial dispute because of a lack of early agreement on arbitration as a dispute resolution mechanism.
Dispute resolution by the courts in Vietnam
In case where the dispute resolution is handled by a court in Vietnam, the plaintiff must submit its lawsuit petition, documents and/or evidence to prove that the plaintiff’s claims are well-grounded and lawful. Moreover, the plaintiff must have regard to the time-limit for initiating a lawsuit in a Vietnam court to settle a commercial dispute. The time-limit is two years as from the date the legitimate rights and interests of individuals, agencies or organizations were infringed.
Conditions for domain name dispute resolution
Notwithstanding what form of domain dispute settlement is chosen, whether by arbitration or by a court, a petition by the plaintiff must satisfy the following three requirements (in addition to the conditions applicable to the initiation of a lawsuit and those governing the content of a petition):
- The disputed domain name is identical with or confusingly similar to the name of the plaintiff; or is identical with or confusingly similar to a commercial trademark or service trademark which the plaintiff is the person who or which has legitimate rights or interests in respect of thereof.
- The defendant has no legitimate right or interest relating to the domain name.
- The domain name has been used by the defendant in bad faith against the plaintiff.
Principles for resolution of disputes concerning a disputed domain name
The Domain Name Registry and VNNIC, based on the minutes on successful conciliation of the parties; decision of the arbitration which is effective; or the verdict and decision of the court which is effective, shall carry out the following:
- Revoke the domain name and accord to the plaintiff priority in registering for use, or maintain the status of this domain name unchanged. In terms of the applicable rules, the domain name must be registered first by the plaintiff within ten consecutive days from the effective date of the said minutes or decision, and thereafter it can be registered freely.
- Perform other decisions in connection with the revocation, suspension or maintenance of a limit-time in respect of the domain name.
Some practical dispute cases in Vietnam
Case 1: domain name “ebay.com.vn” vs trademark “eBay”
The first dispute relates to the domain name “ebay.com.vn” between eBay Inc. located at No. 2145 Hamilton Avenue, San Jose, CA 95125, USA (“eBay”) and Moc My Co., Ltd. located in Ho Chi Minh City, Vietnam (“Moc My”). EBay is a company focusing on auction services by internet and e-commerce and also the owner of the trademark “EBAY” registered in Vietnam since 2002. Simultaneously, eBay registered more than 2,500 domain names covering the phrase of “eBay” amongst which seven domain names were registered in Vietnam without domain name “ebay.com.vn”.
In the early part of 2005, after discovering that domain name “ebay.com.vn” was registered by Moc My, eBay had authorized a legal representative to file a statement of claim with VNNIC requesting it to revoke and to re-allocate that domain name to eBay (the “First Claim”). According to the applicable laws at that time, VNNIC was only empowered to provide both parties with contact information so that they could deal with their dispute. Unfortunately, no agreement was reached.
After that, Moc My changed its company name to A Lo Trading and Services Co. Ltd. (“A Lo”) deploying services for design of website and for provision and recording of information from the internet. The domain name “ebay.com.vn” was based on the same interface as that used for the domain name www.alo.com.vn. In early 2007, eBay continued its efforts by appointing a new legal representative to lodge another claim with VNNIC requesting it to cancel the validity of the allocated domain name “ebay.com.vn” under the name of A Lo and requesting it to grant this domain name to eBay (the “Second Claim”). Pursuant to the applicable regulations, VNNIC was only able to provide both parties with contact information for eBay with a view to facilitating the parties ’s mutually settlement of the dispute.
In December 2007, eBay appointed a director in charge of South-East Asia and another legal representative to gather information in order to pursue the case further and to aid in the preparation of necessary legal procedures.
Case 2: domain name “samsungmobile.com.vn” vs trademark “Samsung”
Samsung Korea Co., Ltd. has been the owner of the registered trademark “Samsung” in Vietnam since 1993. The dispute arose as Samsung Korea Co., Ltd. took the view that Mr. Duong Hong Minh who registered domain name “samsungmobile.com.vn” as from 03 November 2005 had done so wrongfully since this domain name includes the word “samsung” which is part of the trademark “Samsung” registered under its name in Vietnam. Accordingly, a law firm in Vietnam was empowered by Samsung Korea Co., Ltd. to try to amicably settle the matter with Mr. Duong Hong Minh in terms of the laws on dispute resolution applicable to disputes in respect of domain names within the Vietnamese national domain name “.vn” but the outcome thereof was unsuccessful. On 21 October 2009, Samsung Korea Co., Ltd. (plaintiff) took legal proceedings against Mr. Duong Hong Minh (defendant) before the Economic Court under the Hanoi City People’s Court (Court) requesting revocation of the domain name “samsungmobile.com.vn” and the granting of permission for the registration of such domain name in the name of the plaintiff.
Pursuant to the arguments presented and the evidence led by both parties in the course of the trial, the Court accepted the revocation request of the plaintiff. On 02 June 2010, the Court issued the decision and Verdict No. 69/2010/KDTM-ST ordering the revocation of the domain name “samsungmobile.com.vn” and the plaintiff’s priority in registration for use for ten consecutive days as of the effective date of the Court’s verdict.
The lawsuit in respect of the domain name “samsungmobile.com.vn” proceeded in conjunction with a similar suit in respect of “samsungmobile.vn” by the plaintiff, but the request made for the revocation of the domain name “samsungmobile.vn” was rejected by the Court. Since the plaintiff disagreed with the decision of the Court in regard to the domain name “samsungmobile.vn”, an appeal was submitted. Consequently the first verdict is considered as having no effect, and the legal position is that the domain name “samsungmobile.com.vn” is regarded as not having satisfied the conditions for revocation and that it is in the process of dispute settlement until such time as the Appellate Court issues the final decision.
On 03 December 2010, because the renewal fee for the domain name “samsungmobile.com.vn” was not paid by the defendant in due course, that domain name was revoked for the plaintiff’s priority in re-registration. The plaintiff then successfully registered the domain name “samsungmobile.com.vn” with a Registry of IP Telecommunications Center.
Legal background and analyses by the authority of Vietnam
Legal background and analyses of the first case
In respect of the First Claim, the representative of eBay argued that “Moc My attached its trademark “EBAY” to Moc My’s facility for provision of auction services via internet, and thus this action infringed its industrial right as the owner”. However, under the regulation on management and use of internet resource at which eBay filed with the First Claim:
- VNNIC had sole authority to resolve administrative complaints on procedure of receipt of the registration dossier as well as during the course of collection of maintenance fees in connection with domain name;  and
- for complaints with regard to a domain name dispute settlement, VNNIC might only encourage and create favourable conditions for the parties involved to reach agreement in regard to such dispute settlement.
In respect of the Second Claim, the representative of eBay argued that “the registration and use by A Lo (a new name of Moc My) over domain name “ebay.com.vn” is the act of unfair competition in accordance with Law on Intellectual Property”. Because of the provision that domain names do not fall within the governing scope of the Law on Intellectual Property, such a dispute should be in the field of registration and use of Vietnamese national domain name ending “.vn” and the resolution thereof should conform to the Law on Information Technology. In fact, due to the failure of the negotiation and conciliation process, resolution of the dispute through arbitration seemed to be impossible for eBay to perform. This was because under the Ordinance on Commercial Arbitration, an agreement between the parties for the settlement of their dispute by the arbitration was required to be available in order to pursue this method of settlement. Thus, the only solution for eBay was to take legal proceedings in court.
Legal background and analyses of the second case
As per the lawsuit conditions for a domain name-related dispute under Circular 10, the plaintiff filed a petition with the court in which the following positions were taken up:
- Samsung Korea Co., Ltd. is one of the premier companies in manufacture and business of mobile phones worldwide and its products consist of mobile phones bearing the Samsung trademark. Accordingly, Samsung is both the trade name and trademark of the plaintiff which has been used widely in most countries across the globe, including Vietnam. The “Samsung” trademark was registered as a trademark in Vietnam and a Certificate of Trademark Registration for mobile phones was issued in 1993 by the National Office of Intellectual Property of Vietnam. In 2008, Samsung Electronics Vietnam Co., Ltd. was incorporated in Vietnam for the manufacture of mobile phones.
- The defendant registered and made use of the domain name “com.vn” which is confusingly similar to the “Samsung” trademark owned by the plaintiff.
- The defendant did not have any relevant or legitimate rights or interest in relation to the use of domain name “samsungmobile.com.vn”.
- The defendant registered and used such domain name in bad faith for the purpose of seeking profits by appropriating the domain name and violating rights and interests of the plaintiff. In particular:
- the domain name “samsungmobile.com.vn” was offered for sale for VND80m (in conjunction with the sale and promotion of another domain name of “samsungmobile.vn”) on the website “muare.com”; and
- during the process of conciliation, the defendant was requested to take steps to get the two domain names returned to the plaintiff, and in return the plaintiff should pay a proper amount in relation to registration and renewal fees paid earlier by the defendant for the past years. However, the amount of VND218,204,000 equivalent to around USD10,0000 proposed by the defendant was improper and demonstrated the appropriating motive of the defendant in registering and using the domain name of the plaintiff.
Referring to documentation available in the lawsuit dossier and the provisions on settlement of disputes regarding Vietnamese national domain names ending with “.vn”, the Judgment Council issued a verdict deciding on the revocation of the domain name “samsungmobile.com.vn” and gave Samsung priority to register this domain name within five consecutive days from the period of revocation. The grounds of this decision were as follows:
- The domain name “samsungmobile.com.vn” registered and used by the defendant was confusingly similar to the plaintiff’s trade name and trademark “Samsung” which has been registered for mobile phones.
- The defendant did not have legitimate rights and interests regarding the domain name “samsungmobile.com.vn”. Also, the defendant was not the manufacturer or the establishment/unit running the business of selling Samsung mobile phones. The plaintiff had never transferred any rights, use rights or other rights allowing the defendant to use the plaintiff’s trademarks including the “Samsung” trademark.
- The defendant had registered and used the domain name “samsungmobile.com.vn” in the bad faith and this was demonstrated by the fact that the Defendant offered to sell this domain name to the plaintiff.
Overall opinion on how to resolve a dispute between domain name and trademark in Vietnam
As promulgated in the Law on Intellectual Property (IP), trademark means any sign used to distinguish goods or services of different organizations or individuals. Industrial property rights to a trademark shall be established on the basis of a decision of the competent state body to grant a “protection title” in accordance with the registration procedures stated in this law or recognition of international registration pursuant to an international treaty of which the Socialist Republic of Vietnam is a member except in the case of well-known trademarks. “Protection title” means a document granted by the competent state body to an organization or individual in order to establish industrial property rights to a trademark, an invention, industrial design, layout design or geographical indication or in order to establish rights to a plant variety.
Taking into account the provisions on management and use of internet resource in Vietnam, the Vietnamese national domain name ending “.vn” is not subject to the Law on Intellectual Property. Domain names are characters or a set of characters which are or contain a trademark, service mark, or relate to copyright or works if registered in accordance with the regulations on the management and use of internet resource ; and a registered domain name is granted the protection applicable to domain names only exclusive of the protection accorded to IP rights. By contrast, such trademark, service mark, copyright and works are granted protection applicable to IP rights without the protection accorded to domain names only if registered in compliance with regulations on IP.
It is very clear that trademarks and Vietnamese national domain names ending with “.vn” are governed by two separate laws,
- the intellectual property regulations and
- the regulations on management and use of Internet resources respectively.
The similarity of both sets of rights is that the ownership thereof must be established in Vietnam via registration procedures with the competent authority or body in each field, that is the National Office of Intellectual Property for trademarks and the Domain Name Registry for Vietnamese national domain names ending “.vn”.
In the event of a dispute between a Vietnamese national domain names ending “.vn” and a trademark, the settlement thereof shall be in conformity with the Law on Information Technology since any such dispute falls to be considered as a dispute with regard to registration and use of Vietnamese national domain name ending “.vn” and is not subject to the Law on Intellectual Property.
Under the Law on Information Technology, there are three forms of dispute resolution. In case of a failure to resolve the dispute through negotiation and conciliation, the remaining methods fall to be considered. Regardless of whether the dispute settlement is by arbitration or in court, the conditions applicable to the initiation of a lawsuit on a domain name must be satisfied. One of those conditions is that the disputed domain name is identical with or confusingly similar to a trademark which the plaintiff is the person who has legitimate rights or interests in respect thereof. In order to satisfy of this condition, a protection title issued by the National Office of Intellectual Property to the plaintiff is deemed to be legitimate evidence. Yet the prerequisite for arbitration or for the court to consider and solve the dispute is also based on the remaining conditions and other sufficient documentary evidence which must be submitted to establish the plaintiff’s rights.
Thus, for the avoidance of any dispute, the best solution is to carry out the registration of both domain names and trademarks simultaneously with the respective relevant authorities in Vietnam.
In 2010, a number of Internet resources in Vietnam have been used extensively. More specifically, the number of Vietnamese national domain names ending with “.vn” hit a peak of 123,611, exceeding that of the Singaporean national domain names ending “.sg”, placing Vietnam in the first rank amongst the Asean nations. This is the reflection of a trend that more and more local and foreign enterprises, organizations and individuals have taken an interest in and been aware of the importance of registration and use of Vietnamese national domain name ending “.vn”.
Another efficient strategy recommended for the protection of domain names in Vietnam is to register several common surrounding domain names ending with “.vn” together and ensure that the annual maintenance fees are paid as and when necessary. Pursuant to the latest applicable fees and charges, the aggregate amount for registration and maintenance of a domain name ending “.vn” has been decreased by between 20 per cent to 30 per cent; the registration and maintenance of a Vietnamese-language domain name is free of charge, which will undoubtedly be advantageous to enterprises wishing to register their domain names in Vietnam.
The correct course of action as to methods to be adopted for protection of the rights and interests of enterprises over their domain name ending “.vn” is, of course, up to the enterprises and individuals. Based on the experience of this author the best course of action, as may be understood from what has been described above, is that “Prevention is better than cure” to safeguard this type of asset in Vietnam.
 Item II, Point 1.1, Circular 09/2008/TT-BTTTT dated 24 December 2008 of the Ministry of Information and Communication providing guidelines on management and use of Internet resource (“Circular 09”)
 Ibid, Item II, Point 1.2, Circular 09
 Ibid, Item II, Point 1.4, Circular 09
 Ibid, Item II, Point 2.1(b), Circular 09
 Ibid, Article 2.1, Circular 09
 Ibid, Item II. 1.2 & 1.3, Circular 09
 Ibid, Item II, Point 2.2(b), Circular 09
 Ibid, Item II, Points 6.1 & 6.3, Circular 09
 Ibid, Item II, Article 2.2(c),: International domain name is domain name under gTLD and cc gTLD apart from Vietnamese national domain name ending “.vn”.
 Ibid, Item II, Point 3.4
 Article 76, Law on Information Technology No. 67/2006/QH11 (“Law on Information Technology”)
 Item III, Point 2, Circular 10/2008/TT-BTTTT dated 24 December 2008 providing settlement of dispute of Vietnamese national domain name ending “.vn” (“Circular 10”)
 Article 187.1, Civil Procedure Code No. 24/2004/QH11 passed by the National Assembly of Vietnam on 15 June 2004 (“the Civil Procedure Code”)
 Item III, Point 3, Circular 10
 Chapter 2, Article 5, Decision 73/QD-VNNIC dated 17 March 2010 providing guidelines on settlement of disputed national domain name ending “.vn” (“Decision 73”)
 Ordinance on commercial arbitration No. 08/2003/PL-UBTVQH (“Ordinance on commercial arbitration”) which came into effect as from 01 July 2003 shall govern arbitration agreements signed from 01 July 2003 to 01 January 2011. As for an arbitration agreement signed as from 01 January 2011, the Law on commercial arbitration No. 54/2010/QH12 (“Law on commercial arbitration”) in replacement of Ordinance on commercial arbitration shall be applied.
 Article 165, Civil Procedure Code
 Ibid, Article 159.3(a), the Civil Procedure Code
 Item II, Point 1, Circular 10
 Ibid, Item IV, Point 2.1(a)
 Ibid, Item IV, Point 2.3
 Ibid, Item IV, Point 2.1(b)
 See 26 above
 Article 20.1, Decision 92/2003/QD-BBCVT dated 26 May 2003 on issuance of provisions on management of use and use of Internet resource (“Decision 92”)
 Article 130.1(d), Law on Intellectual Property No. 50/2005/QH11 (“Law on Intellectual Property”): The following acts shall be deemed to be acts of unfair competition: 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 and geographical indication.
 Article 3, Law on Intellectual Property and its amendment: Subject matter of intellectual property rights: 1) the subject matter of copyright and the subject matter of copyright related rights; 2) the subject matter of industrial property rights shall comprise inventions, industrial design, designs of semi-conducting closed circuits, trade secrets, marks, trade names and geographical indications; and 3) the subject matter of rights to plant varieties shall comprise plant varieties, reproductive materials and harvest materials.
 Article 76, Law on Information Technology
 Article 2.2, Ordinance of Commercial Arbitration
 See 27 above
 Item II.1, Circular 10
 VND: Vietnam Dong
 Chapter 2, Article 4, Point 4.5, Decision 73
 Item II, Point 2.1, Circular 10: Acts of using domain name in bad faith include hiring or transferring domain name to the petitioner who is the owner of a name, commercial trademark, service trademark which is identical with or confusingly similar to such domain name.
 Article 4.16, Law on Intellectual Property
 Ibid, Article 6.3(a)
 Ibid, Article 4.25
 Item II, Point 2.1(c), Circular 09
 Article 1.2, Decision 18/QD-VNNIC dated 10 January 2011: The duration for payment of renewal fee for domain name is within 20 consecutive days as from the expiry date of this domain name.
 Issued in conjunction with Circular 189/2010/TT-BTC dated 24 November 2010 of the Ministry of Finance.