Although it fails to address cybersquatting
It has long been challenging for IP right holders in Vietnam to enforce their intellectual property rights against infringing domain names. Even where administrative decisions have held in their favour, the Vietnam Internet Network Information Center (‘VNNIC’) has consistently refused to cancel/transfer the infringing domain name. The reason for this is that the VNNIC bases its decisions on the Law on Information Technology (which does not recognize the methods of resolving domain name disputes contained in the Law on Intellectual Property, i.e cancellation/transfer of the infringing domain name) while the decisions of the IP administrative authorities are based on the Law on Intellectual Property.
A Joint Circular issued by the Ministry of Science and Technology (‘MoST’) and the Ministry of Information and Communications (‘MoIC’) on 8 June 2016 (Joint Circular No. 14/2016/TTLT-BKHCN-BTTTT) aims to remove this conflict and establish clear guidelines in relation to domain names that infringe IP rights. While it goes some way towards achieving its aim, it does not deal with one of the most important issues for IP owners: cybersquatting, i.e. the registration of an infringing domain name, without any use; usually done for the purpose of reselling the name, or preventing the IP holder from registering it.
The guidelines and procedures set out in the Joint Circular apply only in the following situations:
(i) where a domain name infringes IP rights, and its associated website contains infringing material; and (ii) where a domain name, i.e. any domain name, is used in connection with the publication of content that infringes IP laws. Pursuant to Articles 5 and 6 of the Joint Circular, infringing content and material includes (a) advertisements, product introductions, and offers over goods and services identical or confusingly similar to those of the right holders which damaged their reputation and business; and (b) information slandering, defaming corresponding goods or services of the right holders.
The guidelines do not apply to cybersquatting. This is inconsistent with a previous MoST Circular 11/2015/TT-BKHCN, issued together with Circular 11/2015/TT on 26 June 2015 (‘Circular 11’), which specifically condemns the act of cybersquatting. A further limitation is that, given the provisions of Articles 5 and 6 in relation to infringing content, the guidelines and procedures may not apply in situations where the associated website is inactive, contains a personal blog, or actively links to other websites that are not related to the business activities of the IP rights holder.
The exclusion of cybersquatting is in line with the MoIC and VNNIC mindset that domain names should be freely registered and transferred and that disputes should be resolved only via court or arbitration proceedings as provided by the Law on Information Technology. It seems that the two Ministries still need to take further action to reach a mutual approach to regulate cybersquatting issues. The relevant IP and IT laws will also need to be amended to remove the conflict that exists in relation to these matters: the IP law still provides that these disputes can be dealt with administratively, while the IT law provides they must be dealt with in court or arbitration proceedings.
In the meantime, IP rights holders will have no choice but to initiate court proceedings in relation to cybersquatting matters, which is not the most efficient means of dealing with the issue. A mechanism similar to that contained in the UDRP is still being considered by lawmakers.
Although the Joint Circular fails to deal with the issue of cybersquatting, and it remains to be seen how effective its provisions will be in practice, it does go some way towards resolving the conflict between the two Ministries in dealing with infringing domain names.