1. What is domain name infringement?

Infringing Domain Name with Associated Infringing Content:

This definition aligns with the Circular's scope and focuses on domains that actively infringe trademarks or other intellectual property rights through the content displayed on the associated website. This includes:

  • Direct infringement: The website prominently features content, such as advertisements, product descriptions, or logos, that are identical or confusingly similar to those of the IP rights holder. This can mislead users and damage the reputation of the legitimate brand.
  • Slanderous or defamatory content: The website publishes information that tarnishes the image or reputation of the IP right holder's goods or services. This can cause undue harm and negatively impact their business.

Cybersquatting:

While not explicitly addressed by the Circular, cybersquatting presents a significant form of domain name infringement in Vietnam. It involves registering a domain name that is identical or confusingly similar to a brand or trademark, without any actual content or website activity. This is often done with the intention of:

  • Reselling the domain name: Cybersquatters can register infringing domains and then attempt to sell them to the legitimate trademark owner for a hefty profit.
  • Preventing the IP holder from using the domain: By holding onto the infringing domain, cybersquatters can block the IP right holder from registering and using it themselves.
  • Misdirecting traffic: In some cases, cybersquatters might build a website on the infringing domain to divert traffic away from the legitimate business and potentially profit from advertising or other means.

Understanding both aspects of domain name infringement - active content-based infringement and cybersquatting - is crucial to grasp the limitations of the Joint Circular and the challenges faced by IP rights holders in Vietnam. While the Circular provides a mechanism for addressing infringement through website content, it leaves a significant gap regarding cybersquatting, forcing IP owners to resort to court proceedings, which can be time-consuming and expensive.

 

2. How does the Joint Circular address domain name infringement?

In Vietnam, Joint Circular No. 14/2016/TTLT-BKHCN-BTTTT tackles domain name infringement through a two-step approach, offering solutions for specific situations. While it doesn't cover all forms of infringement, it represents a step forward in streamlining administrative procedures for certain cases.

Step 1: Tackling Infringing Content on Associated Websites:

The Circular focuses on domain names where the infringement happens not just on the name itself, but also on the content displayed on the associated website. This means:

  • Obvious trademark usage: If the website features advertisements, product descriptions, or logos that blatantly copy or closely resemble those of the IP right holder, it counts as infringement. This protects brands from misleading users and damaging their reputation.
  • Defamation and slander: The Circular also addresses situations where the website publishes harmful information that tarnishes the reputation or quality of the IP right holder's goods or services. This safeguards legitimate businesses from malicious attacks.

In these cases, the IP right holder can file a complaint with the Vietnam Internet Network Information Center (VNNIC). The VNNIC, after reviewing the complaint and finding clear evidence of infringement, can order the domain name registrar to cancel the infringing domain. This provides a relatively faster and less expensive alternative to court proceedings.

Step 2: A Gap Remains for Cybersquatting:

However, the Joint Circular's effectiveness has limitations. Notably, it falls short in addressing a prominent form of infringement: cybersquatting. This involves registering a domain name identical or confusingly similar to a trademark, often without any active website or content. Cybersquatters typically aim to:

  • Sell the domain for profit: They wait for the IP right holder to notice the infringing domain and then attempt to sell it for a high price.
  • Block legitimate use: By holding onto the domain, cybersquatters prevent the IP rights holder from registering and using it themselves.
  • Misdirect traffic: In some cases, cybersquatters might build a website on the infringing domain to divert traffic away from the legitimate business.

Unfortunately, the Joint Circular's focus on website content leaves cybersquatting outside its scope. This means IP rights holders facing this issue have to resort to lengthier and more expensive court proceedings, often leaving them vulnerable to delays and added costs.

Moving Forward: Bridging the Gap and Protecting IP Rights:

While the Joint Circular represents a positive step in streamlining administrative procedures for specific cases of domain name infringement, its limitations call for further action. Addressing cybersquatting effectively requires exploring additional measures, such as:

  • Amending relevant laws: Bringing the IP and IT laws into alignment regarding administrative handling of cybersquatting cases would clarify procedures and offer swifter resolutions.
  • Implementing UDRP-like mechanisms: Adopting a system similar to the Uniform Domain-Name Dispute-Resolution Policy (UDRP) could provide a faster and more cost-effective way to handle cybersquatting disputes outside the courts.

By working towards a comprehensive approach that tackles both content-based infringement and cybersquatting, Vietnam can create a more robust and efficient domain name ecosystem, better protecting the valuable intellectual property rights of businesses and individuals alike.

 

3. What are the benefits of the Joint Circular?

While not a silver bullet, the Vietnamese Joint Circular No. 14/2016/TTLT-BKHCN-BTTTT offers several advantages in resolving domain name infringement disputes within specific parameters. Here's a closer look at the benefits it brings:

Simplifying the Process:

For cases where infringement occurs through content displayed on the associated website, the Circular provides a clearer and faster administrative route compared to lengthy court proceedings. IP rights holders can file complaints with the VNNIC, a dedicated entity with expertise in the domain name field. This streamlines the process, saving time and potentially reducing costs.

Cost-Effectiveness:

Administrative procedures through the VNNIC are generally less expensive than court fees and lawyer costs associated with litigation. This financial benefit is particularly important for smaller businesses and individuals who might otherwise shy away from defending their IP rights due to financial constraints.

Deterrence and Enforcement:

The Circular acts as a deterrent for individuals and entities seeking to infringe on trademarks or other intellectual property rights through domain names. Knowing that infringement can lead to swift cancellation of the domain name can discourage malicious actors. Additionally, the Circular provides a clear pathway for enforcement, empowering IP rights holders to take action against infringers effectively.

Transparency and Predictability:

The Circular establishes a set of guidelines and procedures for handling domain name disputes, leading to greater transparency and predictability in the process. This clarity benefits both IP rights holders and domain name holders, as they understand the steps involved and the potential outcomes of complaint proceedings.

Streamlining Administrative Procedures:

For the specific cases it encompasses, the Circular contributes to a more streamlined and efficient administrative framework for resolving domain name disputes. This helps reduce the strain on the judicial system and allows for quicker resolution of these issues, ultimately benefiting both businesses and the overall legal environment.

However, it's crucial to remember that the Circular's benefits have limitations. Its scope excludes the prevalent issue of cybersquatting, leaving IP right holders facing this form of infringement with fewer readily available tools. Nevertheless, the Joint Circular represents a positive step towards a more robust and efficient system for tackling domain name infringement in Vietnam, providing valuable advantages within its targeted areas.

 

4. What are the limitations of the Joint Circular?

While the Vietnamese Joint Circular No. 14/2016/TTLT-BKHCN-BTTTT offers a roadmap for tackling certain domain name infringement cases, its path is not without bumps and detours. Let's explore the limitations that prevent it from being a comprehensive solution:

Cybersquatting Gaping Hole:

The Circular's most glaring limitation lies in its failure to address cybersquatting, a prevalent form of infringement where a domain name is registered that closely resembles a trademark but remains inactive. This leaves IP right holders vulnerable to:

  • Blackmail or extortion: Cybersquatters can hold onto the infringing domain and attempt to sell it to the IP right holder for a hefty price, essentially profiting from someone else's intellectual property.
  • Traffic diversion: In some cases, cybersquatters may build a website on the infringing domain to draw unsuspecting users away from the legitimate business, potentially damaging brand reputation and affecting revenue.
  • Blocking legitimate use: By holding onto the domain, cybersquatters prevent the IP right holder from registering and using it themselves, hindering their online presence and marketing efforts.

This significant gap forces IP rights holders to navigate the more time-consuming and expensive route of court proceedings, often leaving them at a disadvantage.

Content-Centric Focus:

The Circular's effectiveness hinges on identifying infringement through the content displayed on the website associated with the domain name. This means cases without active websites or demonstrably infringing content fall outside its scope. For example:

  • Inactive websites: If a cybersquatter registers an infringing domain but doesn't build a website on it, the Circular doesn't offer a clear path for action, even though the potential for harm remains.
  • Personal blogs or non-infringing content: If the website associated with the infringing domain primarily features personal content or unrelated material, the Circular's application becomes ambiguous, potentially leading to delays or dismissal of complaints.

This narrow focus leaves certain areas of infringement unprotected and creates uncertainty for IP rights holders in some situations.

Conflicting Legal Landscape:

The Circular exists within a legal landscape where the IP Law and the IT Law have differing approaches to domain name disputes. While the IP Law allows for administrative resolution through the VNNIC, the IT Law prioritizes court proceedings. This discrepancy can lead to confusion and potentially undermine the effectiveness of the Circular's streamlined procedures.

Potential for Misuse:

Despite its positive intentions, the Circular's content-based focus also carries the risk of misuse. Individuals with ill intent could potentially abuse the complaint process against websites with legitimate content based on perceived similarities or trademark disputes, leading to unnecessary disruption and potential harm to online businesses.

While a commendable step, the Vietnamese Joint Circular serves as a reminder that the path to addressing domain name infringement is still under construction. Its limitations highlight the need for further legal refinements, broader scope encompassing cybersquatting, and greater harmonization between relevant laws to create a more comprehensive and effective framework for protecting intellectual property in the digital realm.

 

5. Conclusion

The Joint Circular is a welcome addition to the Vietnamese legal landscape. It provides a clear and efficient process for resolving domain name disputes, which will help to protect the interests of businesses and trademark owners in Vietnam. However, the Joint Circular also has several limitations, which means that it is not a perfect solution to the problem of domain name infringement.

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