Trademark infringement over country-code top level domain names

OSRAM, the leading German-based multinational lighting manufacturer, penetrated Vietnam in 1994. Despite its 25 years of operations in the Southeast Asian country, OSRAM has not registered Vietnamese ccTLD yet for its official website. Although the firm has completed its formal procedures required for trademark and intellectual property protection of its products in Vietnam, the decision to keep the traditional Osram.com domain in Vietnam instead of using a ccTLD extension has triggered a bitter fight over ownership of the name.

The domain names of a company function as its "phone numbers" on the internet, and domain names like Osram.com.vn and Osram.vn make it seem like they are part of the official OSRAM. However, they have been registered in 2014 by Nguyen Van Tu, who is not attached to OSRAM's branch in Vietnam. In fact, Nguyen Van Tu used his Vietnamese ccTLD to sell lighting equipment, wires, and sockets, among other products – to be then sued by the German firm for trademark infringement.

“Domain names are given out on a first-come, first-served basis. This procedure sometimes leads to conflicts between businesses owning long-established trademarks and unscrupulous people snatching up the ccTLD before them,” said Nguyen Tran Tuyen, attorney and managing partner at ELITE law firm.

Disputes ignited over Vietnamese country-code top level domain name

The Vietnam Internet Network Information Center (VNNIC) handles an average of 20 to 30 cases of complaints a year relating to ".vn" domain names. Disputes of rights over the use of domain names have created troubles for even the biggest fish, such as US multinational IT company headquartered in New York IBM and the ibm.com.vn domain name; Toyota Motor Vietnam and the domain names toyotavn.vn, camry.vn, and innova.vn in October 2006; eBay and ebay.com.vn between early 2005 and the end of 2007; Samsung and samsungmobile.com.vn during 2008-2010; BamBoo Airways of FLC Group and bambooairway.vn at the end of August 2018, and most recently, Sacombank with the domain name e-sacombank.com.vn.

Benefits of ccTLD

According to Decree No.72/2013/ND-CP of the government on management, provision, and use of internet services and online information, if the domain name under dispute is identical or confusingly similar to the domain name, trademark, or service brand of the plaintiff, there are grounds for a legal case. Taking advantage of trademark or ccTLD for unhealthy competition purposes also violates Vietnamese law as well. However, prevention is better than cure.

“First and foremost, companies should file applications to secure their trademark with the competent national office to prevent others from diluting or outright stealing their brands. Second, even though applying for ccTLD is not strictly required in Vietnamese law, holding a .vn or .com.vn name would be one of the smartest ways to put firms on the map, as it substantially increases firms’ audience and maximise their revenue from target customers,” attorney Tuyen told VIR.

While a registered trademark is a precious intangible asset, ccTLD provides companies with valuable internet real estate, the attorney stressed.

ccTLD will not only act as a clear indication of foreign firms’ location in the country to search engines, users, and the government alike but also prevent trademark infringements. Domain names, a prerequisite of the website, are undoubtedly the key for businesses to enter the digital economy in the era of the Fourth Industrial Revolution.

While a registered trademark is a precious intangible asset, Vietnamese ccTLD provides companies with valuable Internet real estate

Experts also state that Vietnamese users will find .vn or .com.vn websites on the first page of the search engine, which also implies legitimacy and keep the websites running more smoothly and efficiently.

Creating local ccTLD sites with content relevant to Vietnamese language and culture also illustrates firms’ professionalism and their respect to their target market.

Vietnam is doing its utmost to facilitate international companies to bring business to the country, including offering very affordable registration fees for ccTLD, at around VND200,000 ($8.70). This cost pales in comparison to the losses which can occur while adding much more legitimacy to firms’ business.

“It is like building a barrier to entry around your brand, making it harder for ill-meaning competitors. The Vietnamese government would also acknowledge companies’ presence and protect businesses in case of infringement, reputational damage, or unhealthy competition,” said Tuyen.

Table: Fee schedule of .vn (Source: Vietnam Internet Network Information Center, Ministry of Information and Communications)