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 12, 2024
Litigation is usually the last resort in resolving disputes. Most parties to a dispute try to avoid litigation altogether, fearing that seeking recourse with the courts or arbitration will lead to a disruption in commercial relationships, result in increased legal expenses, and generally lengthen the period in which the dispute remains unresolved. While some of these concerns may indeed be legitimate, sometimes litigation is the only means for a party to obtain relief. For parties contemplating such recourse, it is reassuring to know that the Thai court system is generally an accessible, unbiased, and balanced vehicle for the resolution of disputes. Civil Litigation in Thailand aims to introduce some of the fundamentals of Thai civil court procedures and practices. This brief guide covers the main issues concerning civil litigation in Thailand as either a plaintiff or a defendant. Tilleke & Gibbins also publishes a similar guide for Vietnam. The full guide is available through the button below.
Read More
December 9, 2024
Attorneys at Tilleke & Gibbins in Phnom Penh have contributed the Cambodia chapter to Labor and Employment Disputes 2024, a comprehensive guide from Lexology Panoramic to labor and employment dispute resolution in various jurisdictions around the world. The Cambodia chapter covers the following topics: Pre-action considerations: Key requirements, third-party funding, contingency fee arrangements Issuing a claim: Forum, territorial jurisdiction, standing, commencing claims, fees, service Defendants and legal personality: Types of claims, time limits, counterclaims Case management: Procedure, rules, amendments to claims, adding parties to proceedings, consolidating proceedings Class and collective actions: Special considerations Evidence: Witnesses, tactical considerations Interim relief: Availability, requirements Trial: Hearings conduct and typical time frames, confidentiality and public access, media reporting Elements of successful claims and burden of proof Alternative dispute resolution: Available types, requirements and expectations Enforcement: Collective employment and labor rights, enforcement of collective rights, standing Remedies and enforcement: Available remedies, assessing compensation, enforcement mechanisms Appeals: Appeal procedure and time frames, other means of challenge Update and trends: Recent cases and developments, technology developments, other issues The Cambodia chapter was authored by associates Mealtey Oeurn, Saryda Ou, Chanvisal Lok; and Jay Cohen, partner and director of the firm’s operations in Cambodia. Tilleke & Gibbins also contributed the Vietnam and Thailand chapters to Labor and Employment Disputes 2024. The full Cambodia chapter is available below as a PDF.
Read More
December 9, 2024
Cambodia’s Law on Seed Management and Plant Breeder’s Rights was enacted in 2008, but it was not until recently that new plant varieties could successfully be registered for protection in the country. Although the law has been in place for some time, recent developments confirmed the application process and a schedule of charges for the registration of new plant varieties. With these developments, breeders have been able to register their new plant varieties in Cambodia since March 1, 2024. Applicants for new plant variety protection must be Cambodian nationals, foreign nationals domiciled in Cambodia, or permanent residents of either a country that is a contracting party to the International Union for the Protection of New Varieties of Plants (UPOV) Convention or a country with which Cambodia has signed a memorandum of understanding on plant variety protection. Applicants can also claim a priority date from the first application for the same plant variety filed in any contracting party of the UPOV Convention within 12 months of the earliest application’s filing date. To be eligible for protection, new plant varieties must satisfy the following criteria: Novelty: A variety is considered “new” if, at the date of filing the application for new plant variety protection, it has not been sold, marketed, or otherwise disposed of others—by or with the consent of the breeder—for more than: One year for any plant variety in Cambodia; Six years for trees and vines or four years for all other plant varieties in countries besides Cambodia. Distinctiveness: A variety must be clearly distinguishable from any other existing varieties. Uniformity: A variety must be sufficiently uniform in its relevant characteristics. Stability: A variety must remain unchanged in its essential characteristics at the end of each cycle of propagation and in each generation. The last three criteria are often
Read More
December 4, 2024
On December 1, 2024, Myanmar’s Intellectual Property Department (IPD) issued the first group of trademark certificates of registration for marks registered under the Trademark Law of 2019. This is the first registration announcement since the start of the IPD’s soft opening period in 2020. With the registration of marks now in place, registered owners will benefit from stronger legal protections. These protections include the exclusive right to prevent unauthorized use of identical or similar marks by third parties and the ability to take enforcement and administrative actions. Myanmar’s implementation of the “first-to-file” system further emphasizes the importance of early registration. Marks registered at an early stage will be in a stronger position when filing oppositions against subsequent applications for identical or confusingly similar marks. The IPD issues certificates of registration in an electronic format to owners who have filed their applications via the IPD’s online filing system. For applicants who submitted their marks via physical applications, the IPD will issue physical certificates of registration. The initial registration term for a mark is 10 years from the filing date and is renewable for additional periods of 10 years each time. The IPD publicly discloses the details of marks registered under Myanmar’s Trademark Law via their official website. The IPD’s issuance of mark registrations under the Trademark Law of 2019 is a decisive step forward in intellectual property protection in Myanmar. It enhances legal safeguards for mark owners and any other authorized persons, and affirms Myanmar’s commitment to aligning its practices with global standards. For more information on protecting intellectual property rights in Myanmar, please contact Tilleke & Gibbins at [email protected].
Read More