The article titled: “Claiming a debt at the end of the year” from Lawyers Le Tien Dat & Lawyers Ho Tuong Vy, is published on Forum of International Bar Association, dated August 2011.
Being a valuable asset, domain names, especially those containing any parts or the whole of trademarks and trade names of famous companies, are subject to extremely serious infringement, and a wealth of domain name-related disputes have taken place not only in Vietnam but also in other countries around the world. Consequently, some hands-on solutions which are often used in the protection of domain names in Vietnam shall be introduced within this article.
Registration of domain names ending “.vn” and surrounding domain names
Most enterprises take great interest in the registration of international domain names ending “.com”, “.net”, “.edu”, “.org” or “.int” and omit the registration of Vietnamese national domain names comprising domain names ending “.vn” and Vietnamese-language domain names. This has resulted in a number of disputes between domain names which are likely to be a result of confusion between domain name and trademark, or between domain name and trade name in Vietnam. Examples of this would be the domain name “samsungmobile.com.vn” as opposed to the registered trademark “Samsung”, or the domain name “ebay.com.vn” versus the registered trademark “eBay”.1
Therefore, the registration of domain names such as FPT, SPT, Netsoft and Hi-Tek with the Domain Name Registry of Vietnam is considered as the backbone of domain name protection for enterprises. Normally, the enterprises, in addition to their core domain name, can register additional surrounding domain names which are used frequently within their particular sector. The purpose of this is to expand the protection for their domain name. Examples of this include the use of:
- “com.vn” for organisations and individuals involved in commercial activities;
- “biz.vn” for business activities;
- “edu.vn” in the fields of education and training;
- “info.vn” in the fields of production, distribution and supply of information;
- “net.vn” in the fields of the establishment and provision of internet services;
- “org.vn” in the fields of politics, culture and society;
- “ac.vn” in the research field;
- “pro.vn” for professional services;
- “health.vn” in the fields of pharmaceuticals and health;
- “int.vn” for international organisations in Vietnam;
- “name.vn” for the names of individuals joining in internet activities; and
- other domain names provided by the Ministry of Information and Communication.2
Immediate shortcomings of this solution include cost-related matters: the more domain names that are registered, the more expensive for those involved. However, based on the newly-issued charges for registration and maintenance of domain names issued in conjunction with Circular 189/2010/TT-BTC dated 24 November 2010 by the Ministry of Finance, there was a significant drop-off in these costs at an average rate ranging from 20 to 30 per cent as opposed to the previous costs, except for second-level domain names containing one or two characters. This is one of the main advantages of this solution. To acquire information on the procedures of registering a domain name ending “.vn”, please contact the Domain Name Registries of Vietnam (a full list of domain names can be found at www.nhadangky.vn).
Registration of Vietnamese-language domain names
Enterprises which are running or going to run business activities in Vietnam are encouraged to take into consideration the registration of Vietnamese-language domain names with the Vietnam National Internet Centre (VNNIC) if domain names of the enterprise include characters specified in Vietnamese encoding, in light of the following specific benefits:
- Vietnamese-language domain names fall in the Internationalizing Domain Names System (IDNS) which is internationally recognized and follows the development trend of the internet content industry;3
- local consumers, especially those who are not fluent in foreign languages, are able to access the websites of the enterprise by using the Vietnamese-language domain names of these enterprises; and
- VNNIC officially deployed the allocation and maintenance of Vietnamese-language domain names free of charge as of 28 April 2011.4
As regulated, Vietnamese-language domain names consist of second-level domain names and third-level domain names under second-level ones by administrative border.5 Also, the meaning of Vietnamese-language domain names must be clear in accordance with the Vietnamese language and should not be abbreviated. For more instructions as to the procedures of registration, enterprises can visit the websites www.tenmientiengviet.vn or www.ten.vn.6
Payment of maintenance fees of domain names
Pursuant to Article 1.2 of Decision 18/ QD-VNNIC dated 10 January 2011, after 20 consecutive days as of the expiration date of a domain name, if the owner does not pay the maintenance fee, the domain name will be revoked and other subjects will be able to re-register the domain name. Hence, the enterprises should pay special attention to the expiry date of their own domain names and conduct procedures for maintenance thereof with the Domain Name Registry on time in order to avoid the risk that other subjects re-register the domain name due to their omission in due of payment of maintenance fees.
Negotiation for the acquisition of domain names
In some circumstances, enterprises have neglected to register their domain names with the Domain Name Registry of Vietnam and/ or the VNNIC which has resulted in those domain names being the property of third parties. Accordingly, the enterprises are often fond of negotiating with these parties for the acquisition of the domain name.
According to Article 76 of the Law on Information Technology No 67/2006/ QH11 dated 29 June 2006, negotiation and conciliation are one of the three forms of dispute resolution on registration and use of Vietnamese national domain names ending “.vn”. Assuming that the parties wish to handle their dispute through the negotiation and can reach an agreement that the disputed domain name shall be transferred, this transfer is impossible to carry out based upon the prevailing laws of Vietnam. This is because there is a dearth of legal provisions on the transfer of domain names. In particular, we are able to see that Circular 09/2008/ TT-BTTTT dated 24 December 2008 is currently guiding the management and use of internet resources in Vietnam as well as some regulations on restoration, suspension and revocation of Vietnamese national domain names ending “.vn” without transfer-concerned issues. Consequently, a resolution which is regularly performed by the enterprises and instructed verbally by VNNIC with regard to the transfer of domain names will be as follows: the owner shall return the domain name to the Domain Name Registry first, and then the assignee shall submit a new application thereof as a normal registration.
The first advantage of this is that the time for dispute settlement through negotiation will be shorter than under the procedures set by arbitration or a court. The next advantage relates to the saving or reduction of costs which may arise from, for or in connection with, for instance, legal advice or lawyers. Furthermore, the successful negotiation on the disputed domain name can help the enterprise minimize loss and damages in terms of economics and reputation. However, this solution may create a bad precedent as the party that originally registered the domain name shall, upon the successful transfer of the domain name to the assignee, make a significant profit when compared with their initial costs for the registration and maintenance.
Through arbitration or lawsuits in court
Two other forms of settlement, through arbitration or lawsuits in court, are the favourable options for a few enterprises when the above-mentioned resolutions are unavailable.
Noting that as per the Law on Commercial Arbitration No 54/2010/QH12 which came into effect from 1 January 2011, dispute settlement through arbitration is the method as agreed by the parties to the dispute. As a result of this, all parties are required to agree to arbitration as the means of resolution of their domain name dispute. If one party disagrees with this method of dispute resolution, arbitration cannot be used to resolve the dispute.
Arbitration offers a lot of considerable advantages, for instance:
- dispute resolution by arbitration shall be conducted in private unless otherwise agreed by the parties;
- the parties shall have the right to reach an agreement regarding the dispute resolution location; and
- the parties shall have the right to choose the arbitrators.
Lawsuits in court
In order for the petitioner to initiate a lawsuit in Vietnam in relation to a domain name dispute, all three of the following conditions need to be satisfied except the conditions on initiating a lawsuit and those on the content of a petition:7
- The first condition is that the disputed domain name is identical with or deceptively similar to the name of the petitioner, or the commercial trademark/ service trademark to which the petitioner holds legitimate rights or interests.
- The second condition is that the petitionee owns no legitimate rights or interests regarding the domain name. As such, the petitionee shall be regarded to have the legitimate rights and interests in relation to the domain name if meeting the conditions set forth in Item II, Point 3 of Circular 10: – the petitionee has been used or clear evidence is given that the petitionee is planning to make use of the domain name or corresponding names to this domain name in connection with the actual provision of goods, products or services ahead of the occurrence of the dispute; or
– the petitionee is known by people through (the use of) the domain name regardless of the lack of rights towards the commercial trademark or service trademark; or
– the petitionee is making lawful use of the domain name which is not involved in commerce, or is making proper use of the domain name without commercial purpose or leading people to the misunderstanding or the confusion regarding the name, commercial trademark, or service trademark of the petitioner; or
– other evidence proving the lawfulness (of the use of the domain name).
- The third condition is that the domain name has been used by the petitionee in bad faith against the petitioner. The interpretation of Item II, Point 2 of
Circular 10, suggests that the domain name is deemed to be used in bad faith by the petitionee if it is used for the purpose of conducting one of the following acts:
– to hire or transfer the domain name to the petitioner who is the owner of the name, commercial trademark or service trademark which is identical with or deceptively similar to this domain name;
– to hire or transfer to the competitors of the petitioner on account of private interests or for the purpose of making a profit illegally;
– to prevent the owner of the name, commercial trademark or service trademark from registering a domain name which is corresponding to this name, commercial trademark or service trademark;
– to ruin the reputation of the petitioner, to limit business activities of the petitioner or to lead to the likelihood of confusion or the loss of trust of people towards the name, commercial trademark or service trademark of the petitioner; or
– other cases proving that the use of the domain name is in bad faith.
Generally speaking, the total of registration and annual maintenance fees of the domain name is not a large amount in comparison to the money, time and effort that the enterprise has to spend for negotiation and acquisition of their domain name from other parties, or for the fulfillment of relevant procedures in order to get their domain name back, especially when including the uncalculated adverse affects to its business activities or reputation. We do not call upon the enterprises to register the high volume of surrounding domain names involved in their major domain name, but we do encourage them to make a clever selection and register the most popular and potentially conflicting surrounding domain names with the authoritative body in Vietnam in a timely fashion.
With the principle of registration and use of Vietnamese national domain names ending “.vn” being “first come, first served”, enterprises should focus on the early registration of their domain names before other parties. Bearing in mind the phrase locking the stable door after the horse has bolted”, early registration of domain names is the best way to ensure that the rights and interests of the enterprise are protected when dealing with this kind of asset.
1 Reference to the website of Vietnam National Internet Centre: www.vnnic.vn.
2 Item II, Point 1.2, Circular 09/2008/TT-BTTTT dated 24 December 2008, providing management and use of internet resources (“Circular 09”).
3 See: http://tenmientiengviet.vn/jsp/index.jsp.
5 Item II, Point 1.4(b), Circular 09.
6 See: http://tenmientiengviet.vn/jsp/index.jsp.
7 Item II, Point 1 of Circular 10/2008/TT-BTTT dated 24 December 2008, providing dispute settlement of Vietnamese national domain name ending “.