Domain Names: Easy Come, Easy Go

By Linh Nguyen

In today’s digital world, domain names are vital for businesses to compete and thrive. While a trademark is rightfully obtained via registration at the Intellectual Property (IP) office, the same process does not apply when it comes to owning domain names even though it is arguably an equally important asset for online branding. If a business can easily set up and own a domain name that is similar to a third party’s trademark, wouldn’t it trigger an IP dispute? This article discusses this issue and touches on:

The use of domain name and its benefits
How to resolve a domain name dispute
Domain name dispute case study

What is the purpose of a domain name?

Living in the era of Industrial Revolution 4.0, virtually all types of business own at least one website to build their online presence and identity. A domain name is a web address typed into the web browser to access a specific website. It is an excellent tool for building online presence as it encourages consumer awareness, recognition and recollection of a particular brand and is reinforced consistently each time the consumer encounters the business’s name. A consistent domain name could also help drive traffic to a website and build reputation for the business which in turn would result in better sales.

How to resolve a domain name dispute?

In accordance with Vietnamese laws in the area of information technology, a domain name is granted based on two conditions:

(i) It is unique i.e., granted to one party only
(ii) First come, first serve

These conditions imply that if a party uses a domain name that is the same as a trademark granted to a third party without any relation to the trademark owner, such appropriation may infringe the rights of the latter. In fact, several domain name disputes between domain name and trademark owners have occurred previously, including a lawsuit between Moc My Co Ltd and e-commerce company, eBay over “ebay.com.vn”. Under such circumstance, disputed parties may choose a resolution method via conciliation, arbitration or court.

Case Study

A domain name dispute known as “case law” or “precedent” (the source of law) in the Vietnam jurisdiction is case law No. 28/2019/KDTM-ST dated 24 July 2019, resolved by Hanoi People’s Court.

The plaintiff, OSR GMBH, a lighting system manufacturer established in Berlin, Germany on 1 January 1919, owned the trademark “OSR”. This trademark and its variations had been registered and protected in over 150 countries including Vietnam via the Madrid system. The plaintiff obtained trademark protection for “OSR…” as granted by the IP Office of Vietnam for several International Registrations (No. 325028 filed on 7 November 1966, No. 567593 filed on 15 February 1991, No. 676932 filed on 16 April 1997, No. 774581 filed on 13 November 2001, and No. 777318 filed on 22 February 2002). The plaintiff also owned more than 640 domain names that included the trademark “OSR…” for their websites worldwide.

The defendant, Hanoi Electric Joint Stock Company, despite not having any business relations with the plaintiff, had registered and concurrently used domain names such as “osr…com.vn” and “osr….vn” that resembled the plaintiff’s trademark since 3 March 2014. The domain names were also used to build and manage websites for advertising and trading of lighting equipment – a business field similar to the plaintiff’s. For that reason, the plaintiff took to court to recover the disputed domain names.

Verdict

The final decision of The People’s Court on 24 July 2019 ruled that the defendant had committed unfair competition because it had no rights in using the trademark “OSR ”. The Court also decided that the websites used by the defendant for commercial activities under the disputed domain names which included the plaintiff’s registered trademark “OSR” might cause confusion among the public. Thus, the Court decided to revoke the defendant’s national domain names and give the priority for registration to the plaintiff within 15 working days from the date of the final decision. To compensate for the plaintiff’s legal expenses, the defendant was ordered to pay a total amount of more than VND 200,000,000 (approximately USD 8,700) and make a public apology in the press including electronic newspapers (www.vnexpress.net, www.dantri.com.vn) and three consecutive editions of Tuoi Tre Newspaper.

Conclusion

The case law above is a lesson to trademark owners to prioritise the ownership of national domain names for their brands. The plaintiff had the upper hand as they had obtained trademark protection beforehand. Businesses should therefore register their trademarks first, followed by international and national domain names afterwards. The ownership of domain names may seem trivial, but the impact may be costly if not protected earlier. Furthermore, it is undeniably an important IP asset for businesses to reach markets beyond geographical limits – more easily than any other advertising and marketing forms.

If you are seeking legal protection of trademarks in ASEAN countries, please do not hesitate to contact us at kass@kass.asia where we can assist you with our free consultation and affordable range of brand creation and IP filing services.

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KASS

Communications at KASS International Sdn Bhd

KASS International is an established Intellectual Property Firm which offers a one-stop solution for IP matters in Malaysia, South East Asia, and worldwide.