Table Of Contents

1. What is Cybersquatting

Cybersquatting is a type of cybercrime in which the offender purchases or registers a domain name that is identical to or similar to an already-existing domain name to make money off of a well-known brand, business name, or individual name. Most importantly, the squatter's bad faith intent makes the act illegal. Though there are distinctions between the two, domain squatting can be regarded as a type of trademark infringement due to its nature. Cybersquatting comes in a variety of forms, and attach can be launched with various objectives.

Squatters frequently register domains to sell them to well-known companies or brand owners for a sizable profit in the future. On the other hand, some cybersquatters are more malevolent and use web squatting for more sinister purposes. To gather user data, they might, for instance, create phishing pages, scams, or even phony surveys using similar domains.
Cybersquatting, to put it simply, is the practice of purchasing or registering domain names with the express purpose of making money off of another person's trademark. All forms of cybersquatting are prohibited by law. Nonetheless, in certain instances, the purported offense is inadvertent and, thus, not unlawful. For instance, it is unlikely that someone is cybersquatting if they register a new domain with the name SmythConsulting.com, focusing on financial consulting, and there is already an established website with the domain SmithConsulting.com that specializes in image consulting. This is because the name similarity is probably accidental and the new website is most likely not making money from using the former's name.
 

2. The Most recent Cybersquatting cases in Vietnam

 

2.1. O.S GmbH Case

In a landmark case demonstrating the growing legal muscle against cybersquatting in Vietnam, German lighting giant Operational Services GmbH (O.S. GmbH) successfully defended its OSRAM trademark against a web-savvy Vietnamese individual. The issue? Two seemingly innocuous domain names – "osram.com.vn" and "osram.vn". But beneath the surface, the Vietnamese individual had built a bustling online storefront illegally hawking products bearing the OSRAM mark, exploiting the brand's established reputation and goodwill for personal gain.

O.S. GmbH, armed with its Vietnamese trademark registration, refused to let the infringement slide. They promptly filed a complaint with the Vietnam Intellectual Property Research Institute (VIPRI), a crucial first step in seeking legal recourse. Recognizing the clear case of trademark dilution, VIPRI swiftly ruled in favor of O.S. GmbH, ordering the revocation of the infringing domain names. However, the unknown Vietnamese individual wasn't ready to concede defeat. The case escalated to the Vietnamese court, where O.S. GmbH faced off against the Vietnamese individual's potential legal maneuvers.

Ultimately, the court upheld VIPRI's decision, delivering a resounding victory for O.S. GmbH. The infringing domain names were permanently revoked and reassigned to the rightful owner, ensuring OSRAM maintains control over its online presence in Vietnam. Additionally, N.D.T. was slapped with a hefty fine, covering legal fees and court costs incurred by O.S. GmbH. To top it all off, a public apology in a local newspaper served as a potent reminder of the legal consequences of cybersquatting.

This case stands as a beacon of hope for foreign companies operating in Vietnam's dynamic digital landscape. It underscores the importance of proactive trademark registration, vigilant online monitoring, and decisive legal action against intellectual property infringement. By following in O.S. GmbH's footsteps, foreign businesses can effectively safeguard their brands and navigate the complexities of cybersquatting in Vietnam's rapidly evolving legal terrain.

 

2.2. Infringement of BMW's domain name in Vietnam

BMW discovered that a few skilled Vietnamese cybersquatters had registered the domain names bmw.com.vn, bmwmotorrad.com.vn, bmw-motorrad.com.vn, bmwmotorrad.vn and bmw-motorrad.vn. These sites, mimicking the renowned marque, threatened to hijack BMW's online presence and potentially mislead consumers. Undeterred, BMW shifted gears and navigated the legal landscape, seeking redress through the Vietnamese Ministry of Science and Technology, a key regulator in the country's digital domain.

As such, BMW swiftly took action against one of the most prominent domain names: bmw.com.vn, by working with the Ministry of Science and Technology (MOST). Recognizing the clear case of trademark infringement, the Ministry acted swiftly, waving a red flag at the infringing sites and ultimately ordering their revocation. This decisive action not only reclaimed BMW's online territory but also sent a powerful message across the digital highway, deterring potential copycats and ensuring the company's brand dominance. As such, when BMW performed litigation action against the rest of the mimicking sites, The judging panel sided with BMW. As a result, the judging panel ordered the revocation of the domain names and required the defendant to pay the legal fees and make a public apology in a high-circulation newspaper. BMW’s claim for damages, however, was denied, due to the lack of evidence of actual (monetary) damages. The court also officially recognized the well-known character of the BMW trademark in Vietnam, which significantly extends the protection scope of the BMW mark, and will be beneficial in future enforcement matters. On 22 June 2020, the Superior Court of HCMC confirmed the first-instance judgment.

The BMW case stands as a testament to the effectiveness of administrative channels in curbing cybersquatting, proving that even in the dynamic world of digital commerce, established brands can safeguard their intellectual property with decisive action.

 

3. Impact of Cybersquatting in Vietnam

In Vietnam's burgeoning digital landscape, cybersquatting casts a long shadow, threatening the growth and prosperity of its enterprises. Its impact stretches far beyond mere annoyance, weaving a web of harm that can cripple brands, erode trust, and stifle innovation. Imagine a competitor lurking online, cloaked under a domain name nearly identical to yours, siphoning off your hard-earned traffic and reputation. That's the chilling reality of cybersquatting.

Firstly, it erodes brand trust, sowing confusion and undermining the carefully cultivated image of Vietnamese businesses. Imagine unsuspecting customers landing on a fake website bearing your logo, only to encounter shoddy products or phishing scams. The damage to your brand's integrity is immediate and severe, eroding consumer confidence and loyalty.

Secondly, cybersquatting wreaks havoc on revenue streams. The infringing websites act as digital parasites, diverting valuable traffic and potential customers away from your legitimate site. This translates to lost sales, missed opportunities, and ultimately, stunted business growth.

Furthermore, cybersquatting stifles innovation and creativity. With the fear of their intellectual property being hijacked online, Vietnamese businesses might hesitate to launch new products or invest in online marketing campaigns. This stifles the digital ecosystem, holding back Vietnam's burgeoning industries and limiting its potential on the global stage.

Finally, cybersquatting exposes Vietnamese businesses to costly legal battles. Reclaiming domain names and fighting for brand rights can be a time-consuming and expensive affair, diverting resources from core operations and hindering growth.
 

Per Article 130 (d) of the IP Law, cybersquatting constitutes an act of “unfair competition” for which an aggrieved party may initiate a lawsuit in Vietnamese court. The following evidence should be taken into account when the trademark owner wishes to take action against the cybersquatter:

a) IPR holder has used a mark in a widespread and stable manner, of which reputation or prestige about products/services bearing such brand has been known by public consumers in Vietnam. Substantiated proofs may comprise information on an advertisement, marketing, display, and exhibition; sales; quantity of products sold; system of distribution agents, joint ventures, and associations; investment scale; evaluations of state agencies and the mass media, consumer picks, and other information showing the well-known status and reputation of the business entity, goods or services bearing such mark in its business activities in Vietnam.

b) The accused party has used the domain name on the Internet for advertisement or introduction of products, offer for sale or sale of identical, similar, or relevant goods or services, causing harm to the reputation or material interests of the holder of protected mark, trade name or geographical indication.

Moreover, the accused party continues to use a misleading mark, trade name, or geographical indication through such domain name despite having been notified and offered by the owner of such mark, trade name, or geographical indication to reach an agreement on reasonable conditions for such use, to which he does not consent.

c) The accused party has registered but failed to activate within 01 years the domain name with wordings identical to a mark, trade name, or geographical indication which is in widespread use and widely used and reputable in Vietnam and there is also ground to believe that he has registered for holding the right to use the domain name only for resale for profits or to prevent IPR holder of such protected mark, trade name or geographical indication from registering the domain name, despite having been notified and offered by the industrial property rights holder to reach agreement on reasonable conditions for such use, to which he does not consent.

 

5. Advice for Combating Cybersquatting

In Vietnam's digital Wild West, battling cybersquatting demands a steely resolve and a multi-pronged approach. Here's your arsenal:

  1. Secure your digital frontier: Proactive domain name registration is your first line of defense. Secure variations of your brand name and trademarks, both domestically and internationally. Consider defensive domain registrations for common typos or misspellings of your domain.
  2. Scout the landscape: Vigilance is key. Regularly monitor domain name registrations for suspicious activity, particularly those mimicking your brand. Tools like WHOIS lookups and specialized monitoring services can be your early warning system.
  3. Act swiftly and decisively: Don't let cybersquatters squat unchallenged. Upon detection, initiate proceedings through the appropriate channels. Vietnam offers both administrative and judicial options. Administrative procedures through the Ministry of Science and Technology are often faster and less expensive. For complex cases, consider legal action through the courts.
  4. Choose the right weapon: Tailor your strategy to the specific case. For clear-cut infringements, administrative procedures might suffice. For malicious actors or complex cases, legal action could be necessary. Seek experienced legal counsel specializing in cybersquatting and Vietnamese intellectual property law.
  5. Raise the flag: Public awareness is your shield. Inform customers about potential cybersquatting attempts and educate them on how to distinguish your legitimate website from imposters. Consider clear disclaimers on your website and utilize social media to alert your audience.
  6. Build a digital fortress: Invest in website security measures to prevent phishing attacks and malware injections on your own site. This further discourages users from being misled by infringing websites.

Remember, vigilance, swift action, and strategic use of legal and administrative channels are your keys to victory. By actively patrolling your digital perimeter and raising awareness, you can deter cybersquatters and safeguard your brand's online presence in Vietnam's burgeoning digital frontier.

 

6. Conclusion

While cybersquatting poses challenges in Vietnam's digital landscape, proactive measures coupled with a robust legal framework can effectively mitigate its risks. By following the outlined advice, individuals and businesses can safeguard their online presence and ensure a healthy and secure digital environment in Vietnam.

If you need further explanation on this subject, please don't hesitate to contact us through email at dung@luatminhkhue.vn or phone number: +84986 386 648. Lawyer To Thi Phuong Dzung.