You are using an outdated browser and your browsing experience will not be optimal. Please update to the latest version of Microsoft Edge, Google Chrome or Mozilla Firefox. Install Microsoft Edge

May 28, 2020

CPTPP Calling: Changes to Domain Name Dispute Resolution in Vietnam?

Subscribe to Updates

Vietnam’s Ministry of Information and Communication (MIC) is drafting a decree to amend Decree No. 72/2013/ND-CP on the management, provision, and use of internet services and online information (Decree 72), one of the key pieces of legislation affecting online business and activities in Vietnam. Among other things, the draft decree is expected to revise the current regime of domain name dispute resolution to bring it in conformity with Vietnam’s obligations under the CPTPP. However, it seems the lawmakers have not yet addressed all the pitfalls the current regime is posing to rights holders and enforcement bodies.

Changes

Under the CPTPP’s requirements, Vietnam must introduce a regime for domain name dispute resolution in line with the Uniform Domain Name Dispute Resolution Policy (UDRP) proceedings, particularly the principles established under this policy. Shortly after the effective date of the CPTPP in Vietnam (January 14, 2019), Vietnam passed an amendment to its IP Law, but left out the issue of domain name dispute resolution, deferring the change to the MIC’s revision of Decree 72.

In fact, in the draft decree, the MIC focused only on revising the elements of domain name disputes to model them after the UDRP elements. Specifically, in order for authorities to rule on a domain name dispute, the complainant must prove the following three elements:

  • the disputed domain name is confusingly similar to the trademark, trade name, geographical indication, or personal name of the complainant;
  • the registrant has no rights and interest in the domain name; and
  • the registrant is registering the domain name in bad faith.

The MIC goes noticeably further than UDRP when it affords the right to fight against cyber-squatting not only to trademark owners but also the owners of trade names and geographical indications.

The current Decree 72 (particularly, Article 16.2) lists six grounds on which the authorities can rely to rule on cyber-squatting. However, the provision is structured ambiguously as it is not clear whether all six grounds must be established or if just one of the grounds suffices to find cyber-squatting. The new change (mostly a change to the structure of the provision) sheds light on how to interpret the regulation. The complainant now must prove three elements, not six, and not one. However, without retroactive effect, things would change only when the draft decree takes force in the near future. Disputes arising during the purview of the prevailing Decree 72 still fall into the land of uncertainty.

No change

In fact, the revision of Article 16.2 falls short of IP rights holders’ expectations and still does not fully comply with the CPTPP requirements. Pursuant to the CPTPP (Article 18.28 of the IP Chapter), the new regime for settling domain name disputes must, among other things:

  • be designed to resolve disputes expeditiously and at low cost;
  • not be overly burdensome; and
  • not preclude resorting to judicial proceedings.

It is clear that apart from judicial proceedings (civil suits), the CPTPP requires Vietnam to introduce a time-effective, cost-efficient, and non-cumbersome mechanism of domain name dispute resolution. The draft decree fails to do so. The current mechanism as set out under Decree 72 remains unchanged, mentioning only civil suits, negotiation, and arbitration. Though arbitration seems to be the most relevant, it does completely satisfy the CPTPP requirement. In fact, it is quite infeasible as both the respondent and the complainant must agree to arbitration.

The MIC still dissents to the administrative procedures as set out under the IP Law, Decree 99/2013/ND-CP, and Joint Circular No. 14/2016/TTLT-BTTTT-BKHCN between the MIC and the Ministry of Science and Technology (MOST)—laws mainly drafted by the MOST. Therefore, it appears the MIC intentionally left out administrative procedures as a mechanism of domain name dispute resolution from the draft decree. The current regime for administrative procedures, of course, does not fully tie in with the UDRP proceedings. However, it would be efficient to start off by including administrative procedures in the draft decree as the procedures, to some extent, meet the CPTPP requirement.

Recommendations

In addition to introducing a new forum for dispute resolution or simply modifying the current administrative procedures, the draft decree should also address other issues that are driving settlement of domain name disputes into stagnation. The draft decree should expressly provide for an automatic lock of domain names during enforcement actions. The draft should additionally allow for an immediate transfer of the domain names once the rulings/judgments take force. Currently, the Vietnam Internet Network Information Center (VNNIC), an agency administering country-code top‐level domains for Vietnam, still declines to transfer disputed domain names to plaintiffs even when the plaintiff has an enforcement judgment from a court.

In all, the current version of the draft decree does not yet effectively prevent the current pitfalls of settling domain name disputes. Given the incredible growth of integration of the internet into society, it is time the MIC and MOST set aside any differences, bridged the gaps between them, and introduced a truly effective tool to address cyber-squatting.

Related Professionals

Practices

Dispute Resolution and Litigation

Intellectual Property

Location

RELATED INSIGHTS​ 

December 21, 2023
Can rights holders record trademark and brand-related IP information with customs and, if so, how? Rights holders can record their registered marks with the Myanmar Customs Department to protect their intellectual property rights from cross-border trade in counterfeit goods bearing their registered marks under the Trademark Law, which came into force on April 1, 2023. Furthermore, regardless of whether they have filed a customs recordation, registered mark owners can request a suspension order to prevent the release of goods into free circulation if they have evidence giving reason to suspect that counterfeit goods are being—or will be—imported into the country, in accordance with Section 68 of the Trademark Law’s. According to Ministry of Planning and Finance (MOPF) Notification No. 50/2023, once a trademark is registered under the Trademark Law in Myanmar, the registered mark owner is entitled to apply for a customs recordation with the Customs Department directly or via a legal representative at no cost. Unless the mark is registered with the Intellectual Property Department (IPD) under the Trademark Law, a customs recordation or suspension order cannot be applied. A customs recordation is valid for two years from the date of the application’s acceptance. The recordation can be renewed every two years, 30 days before the expiration date. After the customs recordation is made, any information amended or withdrawn for the registered mark at the IPD must also be provided to the Customs Department within three working days, together with any necessary documentation reflecting the amendments or withdrawal. Customs recordation is not available for industrial designs. The Industrial Design Law and Industrial Design Rules do not provide the requirements and process for a customs recordation or suspension order in relation to industrial designs. Section 68 of the Industrial Design Law indicates that, upon a rights holder’s request, the
Read More
December 15, 2023
As part of its membership in Lex Mundi, Tilleke & Gibbins has published an updated edition of its Guide to Doing Business in Thailand for 2023. This guide outlines the key factors for starting and operating a business in the Thai market. Issues covered include: Investment incentives Financial facilities Exchange controls Import and export regulations Structures for doing business Requirements for the Establishment of a Business Operation of the Business Cessation or Termination of the Business Labor legislation, relations, and supply Tax Immigration requirements This publication is part of Lex Mundi’s Country Guides series prepared by member firms in more than 100 jurisdictions worldwide. The guides serve as a useful resource for planning international business strategy and researching new markets. The full Guide to Doing Business in Thailand is available through the button below.
Read More
December 13, 2023
Thailand’s economy in recent years has felt the impact of a seemingly endless list of challenges, such as the COVID-19 pandemic, global economic recession, repercussions from wars and armed conflicts, slumping exports, and recurring internal political turmoil. Many Thai companies simply went bankrupt during this time, but many others have gone through the process of business rehabilitation as laid out in Thailand’s Bankruptcy Act. This article outlines Thailand’s business rehabilitation procedures and explains how creditors can collect debts from companies involved in rehabilitation. Business rehabilitation in Thailand Under the Bankruptcy Act, a creditor, debtor, or government agency under certain circumstances can file a business rehabilitation petition when all of the following conditions are met: The debtor is insolvent or unable to pay the debt due for payment (cash-flow insolvency). The debtor is a juristic person indebted to one or more creditors for a total of at least 10 million baht. The debt can be determined in a definite amount, irrespective of whether it is due for payment immediately or in the future. There is a reasonable prospect of the debtor’s business being rehabilitated. “Insolvency” means a debtor has more debts than assets. However, the Bankruptcy Act also gives some criteria for being able to assume that a debtor is insolvent. Examples include debtors declaring to the court that they are unable to pay their debts, or debtors defaulting on debt payments after receiving at least two demand letters from a creditor (with at least 30 days between the letters). Once the court receives a business rehabilitation petition, the debtor will be protected under an “automatic stay.” This means that any creditor cannot sue or force the debtor to pay a debt, and the debtor is not allowed to pay any debt unless it falls into one of the exceptions
Read More
December 11, 2023
On November 30, 2023, Vietnam’s Ministry of Science and Technology issued Circular No. 23/2023/TT-BKHCN detailing the implementation of some articles of the 2022 Intellectual Property Law (“IP Law”) and Decree No. 65/2023/ND-CP with respect to the establishment and protection of industrial property rights (“Circular 23”). Circular 23 took immediate effect upon issuance and provides further guidance and necessary clarifications for the implementation of the IP Law, which took effect on January 1, 2023. Some of the most critical provisions of Circular 23 related to the establishment of IP rights are discussed below. Common Procedures Circular 23 enumerates and details the cases where an application will be re-examined, as stipulated in various articles of the IP Law. The circular also adds the procedure in which a protection title can be partially granted, as newly stipulated in Article 118 of the IP Law. The procedure applies to patent, industrial design, and trademark applications. Grounds for IP rights invalidation are further detailed in the new circular. On the patent side, it provides a list of situations where claims are deemed to go beyond the scope of the specification. For trademark registrations, it specifically defines two conditions in which “bad faith” grounds can be used to cancel a registration. The circular sets out the procedure for opposing an application, as stipulated in the new Article 112a of the IP Law. Unlike previous regulations, Circular 23 sets out that the IP Office will inform the applicant of all oppositions (whether or not the opposition is grounded), except for obvious cases where the IP Office will consider the registrability of an opposed mark without informing the applicant. To facilitate applicants and related parties, some timeframes have been extended from one to two months. This includes, for example, the time limit for the applicant and the
Read More