Decree No. 147/2024/ND-CP on managing, providing, and using internet services and online information (“Decree 147”), which replaces Decree 72/2013/ND-CP dated 15 December 2023 (“Decree 72”), took effect on 25 December 2024 and introduces changes to the domain name “.vn” dispute resolution regime in Vietnam. It may, however, await further guidance or amendments for a more comprehensive domain name dispute resolution framework, a UDRP-like regime as committed under the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (“CPTPP”).
Clear grounds for “.vn” domain name dispute resolution
Decree 147 stipulates clearer grounds for “.vn" domain name disputes in Vietnam1. Essentially, it provides the three criteria that must be fully met for a plaintiff to dispute a domain name and the specific conditions under which a defendant can be considered to have legitimate rights or interests in a disputed domain.
When a plaintiff can initiate a “.vn" domain name dispute. A dispute can be initiated by a plaintiff if it fully meets the three conditions. Firstly, the disputed domain name is identical or confusingly similar to a trademark, geographical indication, trade name, or personal name that the plaintiff legally owns or has rights to. Secondly, the defendant does not have any legitimate rights or interests in relation to that domain name. Thirdly, there is a bad faith use by the defendant. In other words, the defendant has used the domain name in bad faith, taking advantage of the reputation or prestige of the plaintiff's trademark, trade name, or geographical indication for the purpose of making an unjust profit.
When a Defendant is considered to have legitimate rights or interests in a “.vn” domain dispute2. A defendant will be considered to have legitimate rights or interests in a disputed domain name if one of the four conditions is met: (i) the defendant has used or has clear evidence of preparing to use the domain name or a name corresponding to the disputed domain name in connection with the defendant's products, goods, or services before the dispute arose; (ii) the defendant is publicly known by the disputed domain name, even if they are not the rights holder of the trademark, name, etc.; (iii) the defendant is using the domain name lawfully, for non-commercial purposes, and without taking advantage of the reputation or prestige of the plaintiff's trademark, name, etc. for the purpose of making an unjust profit; and (iv) there is other evidence to prove the legitimacy of the defendant's interest in the domain name.
Deletion of prescriptive actions
While Decree 147 removes prescriptive actions, it is unclear if it fully embraces administrative action in line with the Vietnam Intellectual Property (“IP”) Law. Accordingly, the Vietnam Internet Network Information Center (“VNNIC”) under the Ministry of Information and Communications of Vietnam is explicitly assigned to settle domain name “.vn” disputes on basis of mediation/ conciliation results, arbitration decisions or conclusions, or court judgments or decisions3. This implicates that the administrative action is not recognized for domain name “.vn” disputes. This contrasts with the IP law, under which the administrative action remains the most common route of action in settlement of IP infringements in Vietnam4 given it is fast, less burdensome and at low cost.
Clearer conditions for domain name freezing and transfer
During the domain name dispute proceedings, VNNIC has the authority to lock disputed domain names upon the request of relevant authorities5. This power to freeze domain names during legal proceedings was previously established and governed by ministerial circulars.
After a successful domain name dispute resolution, the plaintiff is granted a grace period of 45 days to register the domain name. If the plaintiff fails to register it within this timeframe, the domain name becomes available for public registration6.
These provisions aim to ensure a fair and efficient resolution process for domain name disputes while balancing the interests of both the plaintiff and the public. However, there may be a concern in implementation of these provisions. In practice, applying the court preliminary injunctive relief measures in the IP proceedings is quite burdensome in Vietnam.
Conclusion
Decree 147 represents a step forward in rounding the domain name dispute resolution in Vietnam. However, the above-discussed issues indicate that it still falls short of fully meeting the CPTPP requirements, which mandates a UDRP-like regime to resolve the domain name disputes expeditiously, at low cost and not overly burdensome7. However, it is anticipated that forthcoming guidance circular(s) or amendments to Decree 147 may introduce a more comprehensive framework for domain name dispute resolution, a UDRP-like regime, which can simplify the process, explicitly resolve the disputes to promptly protect the legitimate rights and interests of the relevant parties.
If you have any questions or require any additional information , please contact Nguyet Nguyen (Nina) of KPMG Law in Vietnam.
This alert is for general information only and is not a substitute for legal advice.
