New administrative measures to resolve domain name disputes
In late 2008 IP owners were encouraged when Vietnam issued long-awaited regulations providing guidance on how to resolve disputes about '.vn' domain names. This optimism soon faded, however, when the reality of the new practice set in. IP owners and practitioners continued to face challenges in securing their rights online, and there appeared to be no clear options for protecting IP rights through a system that was transparent, effective, cost-efficient and time-saving.
Circular 37/2011/TT-BKHCN of the Ministry of Science and Technology, which took force on February 10 2012 (Circular 37), is expected to breathe new life into the current mechanisms for resolving domain name disputes involving IP rights, such as trademarks, trade names and geographical indications, by describing in more detail the administrative measures to be used as a means of resolution.
Under Vietnam’s 2006 Law on Information Technology, there have traditionally been three options available to resolve domain name disputes:
- informal negotiation;
- arbitration; and
In order to provide a more comprehensive framework for domain name dispute resolution, the Ministry of Information and Communication introduced Circular 10/2008/TT-BTTT (Circular 10) in December 2008. Circular 10 provided details regarding the grounds under which a complainant may take action under these three options, allowing the complainant to proceed if it can demonstrate all three of the following:
- The disputed domain name is identical or confusingly similar to the name of the complainant, or identical or confusingly similar to a trademark in which the complainant has lawful rights or interests;
- The registrant has no lawful rights or interests in the domain name; and
- The domain name has been used by the registrant in bad faith.
Circular 10 also provided evidentiary requirements and set forth some very general rules on procedure.
Despite the availability of various measures for dispute resolution ranging from negotiation to litigation, most IP rights disputes in Vietnam are currently settled through administrative measures (penalties carried out by state agencies outside the court system). This is typical for Vietnam, even though concerned parties based in other jurisdictions often think of civil actions when it comes to dispute resolution. The 2005 Law on Intellectual Property (Article 130.1.d) and Decree 97/2010/ND-CP on administrative sanctions in the field of industrial property rights (Articles 11, 12, and 14.10.a) include administrative measures as an approach to resolve domain name disputes.
However, these administrative measures have always been difficult to enforce. The Vietnam Internet Network Information Center (VNNIC), the state agency managing and allocating domain names under '.vn', has the power to withhold, cancel or transfer disputed domain names. Prior to the enactment of Circular 37, VNNIC relied on legal documents - namely, the 2006 Law on Information Technology, Circular 10 and Decision 73/QD-VNNIC (dated March 17 2010) - to enforce decisions or judgments regarding disputed domain names. However, as stated above, these documents did not provide for administrative measures; instead, they provided for civil measures, negotiation and arbitration as methods to resolve domain name disputes. As a result, the use of administrative measures for resolving domain name disputes came to a near standstill.
With a view to resolving this bottleneck, Circular 37 provides new clarity on how these disputes can be settled. First, Circular 37 demonstrates the intent of the Ministry of Information and Communication - the body with direct authority over VNNIC - to deal with domain name disputes through administrative measures. Administrative decisions on domain name disputes can now be enforced by VNNIC, as provided in Article 2.3.b(i) of the circular.
Second, all pending disputes that arose before the effective date of the circular can be dealt with administratively. This is definitely a positive development for disputes that have remained unresolved for a long time.
However, there may be some obstacles to the implementation of the circular in practice. The circular does not provide for the freezing of the transfer or cancellation of the disputed domain name during the application of the administrative measures. This means that IP rights holders run the risk of having to start anew if the cybersquatters transfer or cancel the disputed domain name during the dispute resolution.
Another potential obstacle lies in Article 11.2.a of the circular, which holds that the person who is entitled to request the administrative resolution of a domain name dispute must be the holder of a trademark, trade name or geographical indication that is widely used in Vietnam. Meanwhile, Article 11.2.b.i does not consider that the wide use of a trademark, trade name or geographical indication is a factor in determining whether unfair competition is occurring. This vagueness raises a question as to whether holders of trademarks, trade names or geographical indications that are not widely used also have the right to fight against cyber-piracy.
Despite its shortcomings, Circular 37 will provide IP rights holders with a new approach to fighting against cyber-piracy. IP owners can now hold out fresh hope that these administrative measures will reinforce the protection of their legitimate rights and interests in Vietnam.
Loc Xuan Le and Linh Duy Mai, Tilleke & Gibbins, Vietnam
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