gTLD – The opportunities and Challenges for Vietnamese Enterprises
A domain name is an identification string that defines a realm of administrative autonomy, authority or control on the Internet. In general, a domain name represents an Internet Protocol (IP) resource, such as a brand name or a trade name used to access the internet, a server computer hosting a web site, or the web site itself or any other service communicated via the internet.
The first-level set of domain names are the top-level domains (TLDs), including the generic top-level domains (gTLDs), such as the prominent domains .com, .net, .org, and the country code top-level domains (ccTLDs) such as the United Kingdom is .uk; Japan is .jp; United States is .us, Vietnam is .vn and so on.
Besides the popular gTLD .com, .net, .org, as mentioned above, today there are a lot of gTLD being launched. Within two years, there are more than 600 new descriptive domain suffixes to choose from .holdings; .lighting; .bike; .hotel; .discount; .ninjas; .horse... to geographical indication such as .paris; .nyc; .london . In addition, many giant enterprises have also started to use the gTLD name such as .phillips; .kpmg; .bmw; . hermes; .barclays.
The revolution of information technology on internet has changed more and more business methods especially for companies that trade online. The right domain name is as much a valuable asset to a company as its property portfolio. For example, let’s think how much of an investment amazon.com was when it was first registered back in 1994, compared with today. A five minutes outage in the domain name would cost Amazon more than $300,000 in lost revenue. In 2012, the brand of Amazon.com was ranked at 18th of the global top brands and appraised up to $34,077 million.
Besides the opportunities of the use of gTLD, some businesses have exploited gTLD for infringement of intellectual property rights (IPR) of other businesses. In recent years, Pham & Associates has handled some IPR infringement cases that take advantage of gTLD as follows.
- MAYA Japan (“The Japanese Company”) is a manufacturer and trader of machines and equipment such as heat pumps, cooling systems, freezers ect and also is the owner of trademark "MAYA" in Vietnam.
- A Vietnamese Company (“Company A”) is a trading company in the same field of machinery which imported from multiple vendors, including products branded "MAYA" of Japanese Company. Company A registered a Vietnamese domain name .vn and designed the website to show its products. In fact, the domain names and content of the website is quite legitimate.
- Aside from the official website mentioned above, Company A used the registered trademark “MAYA” by making a domain name registration under the name of www.maya.asia. When click on this address, it will automatically link to the official website .vn of Company A.
The Article 5.4 of Decree 105/2006/ND-CP detailing and guiding the implementation of some articles of the Law on IPR protection IPR and IPR management amended and supplemented by Decree 119/2010/ND-CP provides that "The infringing acts that take place via internet but it targeted at consumers or information users in Vietnam shall be regarded as to take place in Vietnam”. According to the current regulation, the act of using trademark MAYA without the right owner’s permission will be constituted an infringement of trademark rights. However, to settle the cases in question by civil or administrative measures is not simple under the provisions of the current law.
Till now, there are no detailed regulations and guidelines for the management of public information across borders (as at the Article 22 of Decree 72/2013/ND-CP). Also, because the foreign social networks such as facebook are not registered and operated under the domain name dot vn, it therefore is not compulsory that the online traders should notify or register with the governing body in accordance with the Law on E-Transactions of Vietnam.
In order to prevent the abuse of gTLD for infringing intellectual property rights, there is a need to promulgate the sooner the better detailed guidelines, procedures for settlement of IPR infringement via gTLD.
Pham & Associates