28 May 2020
Introduction
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:
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the disputed domain name is confusingly similar to the trademark, trade name, geographical indication, or personal name of the complainant;
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the registrant has no rights and interest in the domain name; and
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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:
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be designed to resolve disputes expeditiously and at low cost;
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not be overly burdensome; and
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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.
For further information, please contact:
Linh Duy Mai, Tilleke & Gibbins
duylinh.m@tgvn.vn
