New draft joint circular on revocation of domain names that violate IP laws
The draft joint circular was prepared by the Ministry of Information and Communication and the Ministry of Science and Technology with the purpose of setting up a mechanism for co-ordination between both ministries with regard to the enforcement of administrative decisions relating to domain names infringing IP rights. If possible, the joint circular must be issued before July 1 2016; after that date, the new Law on the Promulgation of Legal Documents - according to which 'joint circulars' may no longer be issued - will enter into force.
The draft joint circular has caused great concern to brand owners because, while it provides for “the compulsory change to, or compulsory transfer or revocation of, '.vn' domain names violating IP laws… where the use of the domain name constitutes a violation with respect to the content featured on the website connected to the domain name”, it appears to preclude the application of these measures where the domain name has been registered “for the purpose of benefiting from, or prejudicing, the goodwill and reputation of [a protected] trademark”, which also constitutes an act of unfair competition and, thus, violates the Intellectual Property Law.
According to Article 6 of the draft joint circular, a '.vn' domain name may be revoked if the brand owner can present evidence that:
the domain name is identical, or confusingly similar, to a trademark or trade name in which the brand owner has legitimate rights and interests;
the registrant of the domain name does not have any legitimate rights and interests in the trademark or trade name at issue; and
The website corresponding to the domain name features: content that takes advantage of, or is detrimental to, the goodwill and reputation of the owner of the trademark or trade name, or causes material damage to the owner of the trademark or trade name; or content that slanders or smears the goods/services of the brand owner.
It is, however, unclear when and how the content of the website corresponding to the domain name will be considered to be “taking advantage of" or be “detrimental to the goodwill and reputation" of the trademark owner, or "cause material damage" to the trademark owner. Without any further clarification, it may be difficult to implement the provision in practice.
Moreover, in order to ask an enforcement authority to carry out administrative measures where the use of a domain name constitutes an act of unfair competition, a trademark owner must prove that the registrant has continued to use the domain name even though it had been requested to "cease use of the trademark”. Therefore, in most cases, the domain name registrant has a chance to take down the infringing content from the website upon receipt of the demand from the trademark owner. This is a real concern because, based on the current wording of the draft, it is uncertain whether the domain name in question can be revoked after the domain name owner has taken down the infringing contents, either voluntarily or at the request of the brand owner.
The draft is open for public comment until January 12 2016. It is hoped that the abovementioned concerns will be addressed before the circular is officially issued.
Son Doan, IPMAX Law Firm, Hanoi
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