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31 August 2020
As internet usage has fully permeated Vietnam, brand owners are discovering just how valuable domain names can be. Duc Dang and Hong Anh Thi Nguyen examine how to protect your trade name or trademark from unscrupulous use online.
With significant growth in internet usage and online commercial activities, domain names and websites have become important marketing and business tools through which companies can promote their entities, brands, products, and services and conduct commercial and non-commercial activities on a global scale. Typically, a company uses its own trade name or trademarks for determining its website address making it easy for customers to identify the company and its goods and services as well as developing a consistent and unique identification for the company.
Because domain names have a unique character, issues arise between owners of similar or identical trade names or marks who wish to use and register the same domain name derivated from such names or trademarks. In Vietnam, domain name registry is designated by the top-level domain .vn. Domain names are assigned on a first-come, first-served basis, and, in practice, there are abuses of this procedure resulting in the improper registration of .vn domains through speculative registration for profit; cybersquatting and abusive registration for the purpose of unfair competition or in attempts to profit from the reputation or good will of other entities. These actions lead to domain name disputes.
This article will discuss how to resolve .vn domain name disputes under the laws of Vietnam.
A dispute over .vn domain names can be resolved by conciliation and mediation, civil lawsuits, or through arbitration. In practice, civil suits in the courts are the most popular method for dispute resolution of .vn domain name disputes in Vietnam. The possible basis for dealing with domain name disputes in civil suits comprise:
Where a .vn domain name registered by the defendant is concluded to infringe the protected intellectual property rights of the plaintiff by a competent authority, the defendant shall be subject to administrative sanctions, including the revocation of the infringing .vn domain name. In order to impose administrative sanctions (i) the domain name in dispute must be identical or confusingly similar to a protected mark, trade name, or geographical indication over which its owner has the lawful rights or interests; (ii) the defendant must have no lawful rights and interests to the protected mark, trade name, or geographical indication; and (iii) the website pointed to by the domain name in dispute must be used for the purpose of defendant’s unfair competition as provided in the intellectual property laws and regulations of Vietnam
Competent authorities for handling .vn domain name disputes include specialized inspectorates of the Ministry of Information and Communications (MOIC) and of the Ministry of Science and Technology (MOST). The Vietnam Internet Network Information Center shall be responsible for provision of information for facilitating the resolution of the dispute, and for implementation of the successful settlement minutes, arbitral award, judgment, or valid decision of a specialized inspectorate in accordance with the prescribed procedure.
Plaintiff: OSRAM GMBH (DE);
Defendant: Nguyen Duc T (VN)
Domain names in dispute: osram.com.vn and osram.vn, registered by the defendant in March 2014 (domainnames)
Handled by the People’s Court of Hanoi (the court)
The plaintiff was a lighting manufacturer established in Germany in 1919 that owned the trademarks “Osram” (in word form and certain designs) (trademarks), which were registered in more than 150 countries, of which the earliest registration was in 1906. The first designation in Vietnam was in 1966. The trademarks had also been recognized as well-known trademarks in various countries including Germany, Austria, Portugal, Brazil, Japan, South Korea, and Thailand.
The plaintiff owned more than 640 domain names based on the trademarks and conducted business activities including the provision of lighting products and related services in different countries through its websites, including websites using the domain names.
The defendant had registered the domain names and used them to establish websites serving his company’s business activities, including providing goods and services which were identical or similar to ones falling within the scope of trademark protection as registered by the plaintiff.
The plaintiff requested the court to pronounce judgement to:
The plaintiff’s arguments included:
The defendant’s arguments included:
The court’s consideration and award at the first hearing
In consideration of the facts and evidence provided by the parties in dispute, the court recognized the registration validity of the plaintiff’s trademarks in Vietnam, and was of the opinion that the act of registering the domain names containing the sign of “Osram” which was identical or similar to the plaintiff’s trademarks, and the use of the same for the defendant’s website for providing goods and services which were similar or identical to ones within the scope of the trademarks protection were considered as an act of unfair competition, and accordingly, the plaintiff’s initiation of the lawsuit and request for revocation of the domain names was legal and accepted. Accordingly, the court:
As published by the Vietnam Internet Network Information Center, the Domain Names were registered on December 24, 2019, in the name of OSRAM GMBH.
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