VNNIC had withdrawn domain names in IP infringement cases several times in the past; however, controversies arising among the management agencies about the methods and mechanism for domain-name withdrawal had resulted in the suspension of withdrawals for two years. In response to this issue, the management agencies mutually discussed and successfully prepared guiding legislation—specifically, Joint Circular No. 14/2016/TTLT-BTTTT-BKHCN of the Ministry of Information and Communications and MOST dated June 16, 2016, guiding the order and procedures for changing and withdrawing IP-infringing domain names (Circular 14). The <www.bmw.com.vn> case was the first in which Circular 14 was applied, paving the way for its application in similar cases in the future.
This case, which was handled by Tilleke & Gibbins, is not only significant because the domain name was successfully withdrawn, but also because the management agencies had to deal with a range of “legal technicalities” to prevent the case from being suspended due to some unclear aspects of the law. For example, Circular 14 provides that the domain name management agency will withdraw “.vn” domain names only after decisions on administrative sanctions (typically monetary fines) are issued. However, in the <bmw.com.vn> case, the applicable time period for issuance of a decision on administrative sanctions had already expired, and the competent authority—the MOST Inspectorate—had not issued a decision on sanctions. Instead, it issued only a decision on the application of remedial measures to force the infringing party to return the domain name.
The problem is that, normally, the compulsory return of domain names is part of a decision on administrative sanctions to resolve a case, but comes under a separate independent decision of MOST, not a decision within the context of IP infringement “sanctions” in the literal sense of the word. The question in the BMW case was whether such a decision would also be subject to Joint Circular 14 and, therefore, whether VNNIC was compelled to comply with the forced withdrawal. Fortunately, the competent agencies interpreted and applied the law in a reasonable and flexible manner, by considering a decision on the application of remedial measures to be, by nature, a decision on sanctions for the purpose of sanctioning the infringing party, and therefore the domain name <bmw.com.vn> was withdrawn smoothly.
Another hurdle to be overcome in this case was that the MOST Inspectorate’s decision on remedial measures provided a period of 30 days from its issuing date for the infringing party to return the domain name to VNNIC. The MOST Inspectorate could not send a request to VNNIC for compulsory withdrawal until such time period has passed and the domain name had not been returned. The infringing party, however, in an official letter providing its opinions, claimed that it did not know about or receive the decision on remedial measures and, therefore, it objected to the compulsory return. However, after inspecting, verifying and certifying that the decision had been sent to the correct registered address of the infringing party, the infringing party could not deny that it actually received and was aware of the decision.
This case is a practical example of how administrative measures can be applied in Vietnam in handling IP infringements in the registration and use of “.vn” domain names. Hopefully, this will create a good precedent for similar cases in the future. Many cases are also handled with civil actions which are more easily enforced, but may be more costly to the rights-holder.
© Tilleke & Gibbins
First published in: Managing IP: http://www.managingip.com/IssueArticle/3744881/Archive/Vietnam-A-new-dawn-for-domain-name-disputes.html
Bio of IPR Expert Mr. Thomas J. Treutler
Name: Thomas J. Treutler
Firm: Tilleke & Gibbins (Vietnam)
Thomas J. Treutler is the Managing Director of Tilleke & Gibbins’ Hanoi and Ho Chi Minh City offices. Tom is fluent in Vietnamese and is registered to practice as a foreign lawyer in Vietnam and before the United States Patent and Trademark Office and the United States Court of International Trade. He has drafted numerous patents that have been granted in the U.S. in areas relating to semiconductors, networking, encryption and database technology for clients including Intel, Cisco and Oracle.
Recognized as a leading lawyer in intellectual property by Chambers Asia Pacific, The Legal 500 Asia Pacific, and Managing IP, Tom has extensive experience in IP enforcement and has secured a number of landmark victories for foreign investors operating in the life sciences and technology sectors. Tom chairs the East Asia and Pacific Subcommittee of INTA’s Famous and Well-Known Marks Committee; heads the Southeast Asia Subcommittee of AIPLA’s IP Practice in the Far East Committee; and serves as the Chairman of AmCham Vietnam’s IT, Telecom & IPR (ITTI) Committee. He is also the local expert for Vietnam for the European Commission’s ASEAN IPR SME Helpdesk, and teaches an Introduction to IP Law course at the Diplomatic Academy of Vietnam in Hanoi, a university-level academy under Vietnam’s Ministry of Foreign Affairs for training future diplomats.
Loc Xuan Le is a principal in T&G Law Firm LLC (TGVN), a licensed law firm and IP agent that partners with Tilleke & Gibbins for local filings in Vietnam. With over 15 years of experience in IP enforcement, Loc is recognized as a leading IP attorney by Chambers Asia Pacific, the WTR 1000, and the IAM Patent 1000, and is praised by clients and peers as “a powerhouse of energy and enthusiasm” and “one of the best lawyers in trademark enforcement in Vietnam” in Managing IPmagazine’s IP Stars.
Loc has cultivated strong relationships with Vietnamese authorities including the court, market control, inspectors, the police, customs, and People’s Committees of various levels. He has organized and overseen raids for leading clients in the pharmaceutical, automotive, high-tech and luxury goods industries and frequently represents clients before the court. He also advises clients on technology transfer, IP licensing, and franchising matters.
Loc has secured several groundbreaking wins in patent infringement cases for major international pharmaceutical and agrochemical companies. In 2014, he obtained the highest award of attorney’s fees in the history of Vietnam on behalf of a U.S. ink cartridge printer company, a case that was named Case of the Year for Southeast Asia by Managing IP magazine. In 2015, Loc was nominated for the Disputes Star of the Year award for Vietnam at the Asialaw Asia-Pacific Dispute Resolution Awards.
Loc sits on the executive board of the Vietnam Intellectual Property Association, and is a member of the Hanoi Bar Association. He also serves as a visiting professor at some of Vietnam’s top universities and regularly publishes on IP matters.