The Hanoi Times - Unique internet domain names are registered on a first-come, first-served basis. Besides being used to locate an address on the internet, in place of a hard-to-remember numeric serial chain, domain names are a superb marketing tool, a method to telegraph information about the business or service being offered.
As a consequence, a domain name is a highly valuable resource for any company.
Enterprises commonly use their trademark or brand as a domain name because it helps customers remember it easily and distinguish it from a competitor’s product, a marketing tool that reinforces brand identity.
Because domain names are registered on the bases of uniqueness and first come, first served, it is not prerequisite for registering authorities to examine whether a proposed domain name will cause likely confusion with another’s brand or trademark.
Nevertheless, some seek to take advantage of the fairly straightforward granting of most domain names to try to appropriate trademarks, trade names, brands or copyrighted characteristics in registering their names, seeking to interfere with the rights and legal interests of the genuine owner; to speculate in domain names, with the ultimate purpose of selling, licensing or otherwise transferring the domain name to another owner for valuable consideration; or simply to engage in unfair competition and misleading advertising by associating their own product or service with a better-known brand.
Moc My Co Ltd (since known as Alo Service and Trading Co Ltd) registered the domain name ebay.com.vn before US-based internet auctions giant Ebay.com, and the latter continues to sue to try and recover the name. Similarly, IBM.com.vn was registered by Mr Ly Gia Khang in August 2003, causing IBM to lose this localised domain name.
These kinds of domain name disputes are no small matter but big concerns for business. Besides ownership rights over a particular domain name, disputes can arise over a State administrative agency’s refusal to grant a particular domain name.
Dispute resolution
Around the world, domain name dis-putes are usually settled by the Uniform Domain Name Dispute Resolution Policy (UDRP), rules issued by the Internet Corporation for Assigned Names and Numbers (ICANN) in collaboration with the World Intellectual Property Organisation (WIPO).
This policy recommends parties agree to resolve the dispute not by recourse to a lawsuit but by means of the alternative dispute resolution method of arbitration. A domain name administrative organisation empowers a qualified dispute arbitrator whose judgement becomes final.
Under Article 30 of the Law on Intellectual Property, which took effect on July 1, 2006, such acts as registering or possessing the right to use a domain name identical or confusingly similar to a protected trade name or mark of another, or using geographical indicators without the right to use, for the purpose of benefiting from or prejudicing the reputation and popularity of the respective trademark, trade name or geographical indicator is viewed as an act of unfair competition.
Domain name disputes nevertheless remain complex and require separate regulations.
With reference to global domain name dispute resolution practices, the Ministry of Information and Communications issued Circular No 10/2008/TT-BTTTT on December 24, 2008, to set forth a .vn domain name dispute resolution policy. The circular implements Government Decree No 97/2008/ND-CP of August 28, regarding administration, provision and use of internet services and internet-based electric information services, as well as the Law on Information Technology of June 2006. This marks the first time
Under the circular, parties may choose one of three modes of dispute resolution: mediation, arbitration or court action.
The legal grounds for setting disputes, as provided by Circular No 10, are:
(i) Domain name is identical or confusingly similar to the complainant’s trade name, trademark, or service mark in which the complainant has rights and a legal interest;
(ii) Respondent has neither right nor legal interest to such domain name; and/or,
(iii) The domain name is being used by the respondent in a bad faith.
Using in bad faith includes: licensing or transferring the domain name to the complainant’s competitors for one’s own benefit or profit; possessing or preventing the owner of trade names or trademarks from using or registering those trademarks or trade names in a domain name; prejudicing the reputation of the complainant; precluding the complainant’s business; and causing confusion over or loss of public trust in the complainant’s trade name or trademark.
The respondent is viewed as having no rights and legal interests in the domain name if there is evidence that the domain name relates to goods or services genuinely sold or advertised by the respondent before the dispute arose; such domain name was known to the public even though the respondent has no right to the trademark or trade name; or the respondent is using the domain name in such a way that neither leads the public to misundertand nor confuse the complainant’s trade name nor trademark.
During dispute resolution, the registrar of .vn domain names can suspend the use of the domain name.
When a court or arbitrator has rendered a decision in favour of a complainant, the registrar of .vn domain names shall withdraw registration of the domain name by the respondent. once minutes of a mediation, an arbitrator’s award or court judgement has been entered, the complainant is entitled to register and use the domain name within ten consecutive days. Failing to do so within this time limit, the domain name becomes available for registration by any other interested party.
With domain names now recognised as one of the most effective marketing tools, of no less value than a brand name affixed to a package, the lesson for any enterprise is to take the initiative to register valuable domain names as soon as possible.
