Circular 14/2016/TTLT-BTTTT-BKHCN: Some features of the procedures for changing and revoking domain names infringing IP right
In an effort to improve effectiveness in handling cases of infringement of intellectual property (“IP”) rights on the internet and/or unfair competition in connection with domain names, on June 8, 2016, Ministry of Science & Technology (“MOST”) and Ministry of Information and Communications (“MIC”) have jointly issued Circular No. 14/2016/TTLT-BTTTT-BKHCN (“Circular 14”) providing guidance on the procedures for changing and revoking domain names infringing IP rights. This Circular takes effect as of July 25, 2016.
Circular 14 has the following main features:
2. Remedies against domain names which violate the IP law
Pursuant to Articles 5, 6, 7 of Circular 14, remedies against domain names which violate the IP law include: (1) Forcible change of information associated with domain names “.vn”; (2) Forcible return of domain names “.vn”; and (3) Revocation of domain names “.vn”. Depending on nature of each act of infringement, the competent authority will apply appropriate remedy as mentioned above. Specifically:
– With regard to forcible change of information associated to domain names “vn”: Pursuant to Article 5 of Circular 14, this remedy will be applied in case “the website pointed to by such domain name posts information infringing IP rights, such as advertisement or introduction information on products, offer for sale or sale of identical, similar or related products/services, damaging the prestige, reputation and property of the owner of a protected mark, trade name or geographical indication”.
Thus, in essence, the person committing the above act of infringement is regarded as lawful owner of the registered domain name. However, as the website associated to the domain name contains IP rights infringing information, the infringer must remove those infringing elements and information. In case the infringer removes the infringing elements within the period of time as prescribed in the Decision on Sanctions against IP rights infringement, the ownership of the domain name shall remain. On the contrary, if the infringer intentionally fails to remove the infringing elements, the domain name can be revoked.
– With regard to forcible return of domain name “.vn”: Pursuant to Article 6 of Circular 14, this remedy will be applied in case all of the following conditions are satisfied: (1) The domain name “.vn” is identical with or confusingly similar to a protected mark, trade name or geographical indication over which its owner has lawful rights or interests; (2) The user of the domain name “.vn” has no lawful rights and interests with respect to the protected mark, trade name or geographical indication; and (3) The website pointed to by the domain name “.vn” contains advertisement or introduction information on product, offer for sale or sale of identical, similar or related products or services, damaging the prestige, reputation or property of the owner of the protected mark, trade name or geographical indication; or information disgracing or slandering products, goods or services of the owner of the protected mark, trade name or a geographical indication.
The above provision means that forcible return of domain names “.vn” is only applied where all of the above three conditions are satisfied. Even if only one of the said conditions is not satisfied, the enforcement authority cannot apply the remedy. In addition, unlike in cases of change of information associated with domain names “vn”, the infringer, subject to forcible return of domain names “.vn”, is not regarded as the lawful owner of the registered domain name. This domain name, in accordance with the law, belongs to other person. Therefore, if the above remedy is applied, the infringer must proceed with the required procedure for returning the domain name to the person who has the lawful right to register.
– With regard to revocation of domain name “.vn”: Pursuant to Article 7 of Circular No. 14, this remedy will be applied in the following cases: (a) The user of the domain name “.vn” infringing IP rights intentionally fails to change information associated with such domain name or fails to return the domain name in accordance with the decision on administrative sanction in the IP field within 30 days from the date such decision takes effect; (b) The user of the domain name “.vn” intentionally fails to prevent or remove information infringing IP rights posted on the website pointed to by such domain name at the request of a competent state agency.
As such, revocation of domain names “.vn” is to be applied not only in cases where the infringer is not regarded as lawful owner of a registered domain name, but also where the infringer is regarded as lawful owner thereof, but fails to remove IP infringing elements as requested by an IP enforcement authority. This stipulation is expected to contribute to discourage internet users from committing IP right infringement or act of unfair competition in connection with domain name.
2. Procedures for changing information associated with, returning and revoking domain names “.vn”
Pursuant to Articles 8, 9, 10 of Circular 14, procedures for changing information associate with, returning and revoking domain names “.vn” are as follows:
– Procedures for changing information associated with domain names “.vn”: In case a decision on administrative sanctions requires application of forcible change of information associated with a domain name “.vn”, the IP enforcement competent authority shall send the decision to the concerned parties, the domain name management agency and the relevant domain name registrant for coordination purpose. Within 30 days from the date on which the decision takes effect, the infringer shall remove the infringing information posted on the website pointed to by such domain name and report it in writing to the decision issuer, the domain name management agency and the registrant managing such domain name.
– Procedures for return of domain names “.vn”: In case a decision on administrative sanctions requires application of forcible return of a domain name “.vn”, the IP enforcement competent authority shall send the decision to the concerned parties, the domain name management agency and the relevant registrant for coordination purpose. Within 30 days from the date on which the decision on administrative sanctions takes effect, the infringer shall carry out procedure for returning the domain name “.vn” to the relevant registrant. Procedure for returning domain names must comply with Article 10 of Circular 24/2015/TT-BTTTT on management and use of Internet resources, issued by MIC on August 18, 2015. Within 3 working days from the date on which the infringer completes the procedure for returning the domain name, the relevant registrant shall report in writing to the decision issuer, the relevant competent enforcement authority and the domain name management agency about the return of the domain name “.vn”.
– Procedure for revocation of domain names “.vn”: Within 5 working days from the expiration of the time limit for application of change of information associated with or return of domain name “.vn”, but the infringer fails to comply with, or in case the infringer fails to prevent or remove information infringing IP rights on the website pointed to by the domain name upon request by a competent authority, the IP enforcement authority shall send a written request to revoke that domain name to the domain name management agency. Within 3 working days from receiving such a written request to revoke domain name “.vn” from the IP enforcement authority, the domain name management agency shall apply technical and professional measures on the system of national DNS servers in order to revoke the domain name, and then notify in writing the results thereof to the IP enforcement authority and the relevant registrant of the domain name.
Responsibility of relevant authorities and agencies for coordinated handling of domain names “.vn” infringing IP rights
Pursuant to Article 11 of Circular 14, in the process of infringement handling, the IP enforcement authority may consider and send written requests to the MIC (which is the competent agency for managing domain names “.vn”) asking for its opinion and coordination before issuing decisions on administrative sanctions against IP right infringement applying forcible change of information associated with or return of domain names “.vn”. However, the IP enforcement competent authority may issue decisions on its own and take responsibility before the law for their decisions. This means that the IP enforcement authority may ask opinion of the MIC in case it is difficult to determine the act of infringement, but is not bound by the law to apply such opinion.