On June 8th, 2016, in Vietnam, the Ministry of Information and Communication and the Ministry of Science and Technology issued a joint memo concerning the recovery of domain names with the <.vn> ccTLD that infringe the Vietnamese Law of 2005 on Intellectual Property.
However if the memo establishes several administrative procedures to resolve disputes on domain names, it nevertheless still failed to mention several important points of dispute and in particular those concerning cybersquatting and typosquatting.
An update on Vietnamese legislation on intellectual property rights
In Vietnam, two laws are important for intellectual property rights and <.vn> domain names: the Law of 2005 on Intellectual Property and the Law on Information Technology 2006. The Law on Information Technology 2006 regulates disputes relating to domain names by providing for four dispute settlement modes (Article 76 of the memo): negotiation, conciliation, arbitration and litigation before the competent courts for each procedure. The Law on Intellectual Property adds that dispute settlement can be done through administrative proceedings before the Ministry of Information and Communication and the Ministry of Science and Technology. These procedures are faster, less expensive than a lawsuit, and they allow an intellectual property rights holder to request cancellation or transfer of the disputed domain name.
However, the “VNNIC” (Vietnam Internet Network Information Center) is based on the Law on Information Technology, which does not recognize the cancellation or transfer of a domain name and which advocates dispute settlement through courts or arbirtration and not through administrative proceedings.
This difference in legislation is a challenge for intellectual property rights holders who wish to exercise their rights.
This explains the need for such a memo to be released by the Vietnamese ministries.
Developments in the Vietnamese Law on Intellectual Property
The circular of June 8, 2016 includes positive measures for intellectual property rights holders.
Indeed, deadlines have been set to force offenders to stop their illegal activities and to transfer domain names to their rightful owner. Also, if the deadline is not met, the administrative authorities can now take action against those offenders who have refused to comply.
Thus, these administrative proceedings make it possible to request the removal of website content linked to the disputed domain name. According to Article 8 of the Circular, the offender will have to respond to the injunction within thirty working days of the administrative decision and remove the relevant content. It is also possible to request the transfer of the domain name to its rightful owner within thirty days (Article 9).
Finally, if the deadline is not met, the relevant ministries can send a request to VNNIC in order for the infringed domain name to be transferred to the legal owner.
However, even though such developments are positive, they are not sufficient since the conditions to access them are too restrictive. Thus, according to Article 7 of the memo, in order to request the transfer of a domain name, it is necessary to have:
- a domain name identical or similar to a trademark confusing for Internet users;
- the disputed domain name must be associated with a website that contains infringing data;
- finally, the domain name should direct to infringing content.
These infringing data and content include:
- advertisements, new product launches and offers for goods and services identical or confusingly similar to those of the rights holder which damaged their reputation and business;
- slanderous and libelous information against the legitimate owner of the goods and services.
It is unfortunate that this new circular was not sufficiently far-reaching in regulating disputes involving infringing domain names. However, it is a step forward in the fight against cybersquatting in “.vn”.
Cybersquatting and Typosquatting overlooked by the new memo
The memo released on June 8th, 2016, fails to include disputes involving cybersquatting or typosquatting where administrative proceedings are required.
As a reminder, cybersquatting refers to a situation in which a person has consciously registered a domain name in bad faith which is identical or similar to a company’s goods and services or its trademarks in order to resell the domain name to that same company, at an inflated price. Typosquatting involves typos, misspellings, voluntary typographical errors so that a domain name is similar to a company name or trademark.
Whether for cybersquatting or typosquatting, the offender does not create a complete website with the infringing information automatically. Consequently the condition of the new Vietnamese memo for a domain name to direct to an infringing website is not met. Therefore, it is not possible for an intellectual property rights holder to benefit from the administrative procedures in these cases. It is possible for them to go through a UDRP procedure since <.vn> is not in the list of ccTLDs involved in the procedure (unlike <.com > or <.fr>).