On 22 April 2014, People’s Court in Da Nang City published Verdict No. 05/2014/KDTM-ST which has been legally effective in the lafarge.com.vn domain name dispute case between the plaintiff LAFARGE of 61 Rue Des Belles Feuilles F – 75116 Paris, France and the defendant, Ms. Pham Thi Ngoc Han, the above-mentioned domain name registrant.
This is an outstanding case concerning the settlement of domain name dispute at this time and may serve as a prototype for the bodies conducting civil proceedings for subsequent resolution of domain disputes.
LAFARGE engages in manufacturing, distributing construction material and civil and infrustructure works. It has widely conducted operations in over 64 countries. In 2001, it came into official operation in Ho Chi Minh City, Vietnam. At present, LAFARGE involves in manufacturing cements and gypsum panel in Vietnam. It affirms that the national domain name lafarge.com.vn registered by Ms. Pham Thi Ngoc Han is identical to the mark “LAFARGE”, “LAFARGE & device”. Some evidences have been rendered for the above affirmation:
- In the Minutes No. 02584510 made on 27 July 2010 between Market Control Department in Da Nang City and Mr. Dong Sy Phung, the presentative of Mr. Pham Thi Ngoc Han indicated that the distinctive element “lafar” is identical to the mark “LAFARGE”;
- Vietnam Intellectual Property Research Institute issued its Assessment Conclusion No. NH194/10YC/KLGD, mentioning that use of the sign “lafarge.com.vn” on the website for advertising the consultancy services, use of construction materials without consents from Lafarge is regarded as IPR infringement over the mark LAFARGE which is being protected under Protection Title No. 406277.
- The website “lafarge.com.vn” has linked to lafarge.jimdo.com, in both home page and the expanded page in the website, the letter “L” is visible in a direct way, which is bold with sizeable font on the light blue shadow, in the middle of the letter “L”, the verbal element “LAFARGE” is represented in the black font in a prominent way, below is the element “.com.vn”, LAFARGE deems that the aforesaid sign is identical to its mark “LAFARGE & device”.
- Ms. Pham Thi Ngoc Han has no connection with LAFARGE as well as the goods/services bearing the mark “LAFARGE”. Ms. Han does not engage in trading the cements and construction material.
- Ms. Pham Thi Ngoc Han registers the domain name “lafarge.com.vn” for the purpose of possessing the right to use the domain name, aiming at obstructing LAFARGE to register the domain name and for re-sales for benefits.
- Besides, the website “lafarge.com.vn” which links to the e-news pages for advertising, sales of construction material will prejudice the reputation or popularity of the mark LAFARGE.
The Court conducted the trial despite the absence of the defendant after being properly summonsed twice without any results. In conformity with the available documents in the case file and relevant legislations on settlement of .vn domain name dispute, Council of Adjudicators considers that:
- At the time of initiation and acceptance of the case, the trademark “LAFARGE”, “LAFARGE & device” are still protected in Vietnam;
- There is no authorization or trade representative agreement between LAFARGE and Ms. Pham Thi Ngoc Han. Ms. Han has not direct or indirect relation with the mark “LAFARGE”.
- Ms. Han’s registration of the domain name “lafarge.com.vn” aims at appropriating the domain name. It goes without saying that such act obstructs LAFARGE who has legitimate rights and interest over the mark LAFARGE.
- The domain name “lafarge.com.vn” is used on bad faith which is evidenced by her offer for sale of such domain name which has constituted an unfair competition, infringing the trademark rights over LAFARGE.
For the above grounds and reasons, through hearing process, the Court accepted the plaintiff’s request of withdrawal of the domain name lafarge.com.vn . On 22 April 2014, People’s Court in Da Nang City decided and rendered a judgement No. 05/2014/KDTM-ST on withdrawing the domain name “lafarge.com.vn” and giving priority for LAFARGE to register the disputed domain name within 10 consecutive days upon the legal effect of the judgement. Upon expiry of the aforesaid deadline, the domain name will be released for registration by any third party. By reason of no appeal or protest, on 13 May 2014, the court judgement came into effect. The domain name lafarge.com.vn was withdrawn and prioritized for LAFARGE to register within 10 days from 13 May 2014. The domain name “lafarge.com.vn” has been registered by LAFARGE on 20 May 2014 by domain name Registrar, Mat Bao.
In practice, the IP agents in Vietnam often advise their clients to settle the trademark-domain name dispute under the administrative route in conformity with Decree No. 99/2013/ND-CP. However, a foreseeable hurdle is the refusal to enforce the Decision made by administrative enforcement authorities. Mr. Hue, Managing Director of Tho & Associates shares that VNNIC now declines to withdraw the disputed domain name based on the Decision of the administrative enforcement authorities although Decree No. 99/2013/ND-CP set out a clearer mechanism for settlement of the vn. domain name dispute. He added that settling a domain name dispute under administrative procedure in Vietnam seems to be a deadlock when the domain name registrant is located abroad or uncontactable. The officials from Inspectorate of Ministry of Science & Technology unveils that in a case where everything seems to be in favor of the complainant, however, upon conducting an inspection on the domain name registrant, the Inspectorate did not locate the registrant based on his registered address, the inspection must therefore be suspended. In a broader sense, in such regard, all efforts, time and money for claiming back the domain name will come to nought.
Ministry of Science and Technology is drafting a Circular in replacement of Circular 37/2011/TT-BKHCN and let’s hope that a more efficient mechanism may be provided for addressing the burning trademark-domain name disputes in Vietnam.