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First case to successfully reclaim the

domain name .vn through the court


in Vietnam
Course title: Business Law
Instructor: Mrs. Hau Do
Presenters:
Nguyen Duc Tuan
1132300374
Ngo Thao Tram 1132300120
Nguyen Hai Duong 1132300183
Business law p 1

The contents
1)Introduction
)Law case
)Plantif
)The facts
2)Analysis the law case
)The issues
)The ruling
)The reasons
3)Result and signifincance of this case

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Introduction of law case

Judgement of No. 05/2014/KDTM-ST


Sector: Commercial Business
Case: Concerning about cybersquatting
Type of judgment: Appeal
Judicial authorities: People's Court in Da Nang City
Date of lawsuit: 25-03-2013
Date of decision: 22-04-2014
Plaintiff : Lafarge of 61 Rue Des Belles Feuilles F - 75116 Paris, France
The defendant: Ms.PhamThiNgocHan-domainnameregistrant

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Plaintiff

Source:

LAFARGE engages in manufacturing, distributing


construction material and civil and infrastructure works.

It has widely conducted operations in over 64 countries.

In 2001, it came into official operation in Ho Chi Minh City,


Vietnam.

The company's Lafarge trade mark has been protected in


Vietnam since 1974, while its Lafarge and device trade
mark has been protected in Vietnam since 1995.

http://www.lafarge.com/en
http://www.lafarge.vn/wps/portal/vn/vi/About_us

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The facts
In 2009, Lafarge discovered that the Vietnamese domain name www.lafarge.com.vn
had been registered by Pham Thi Ngoc Han, a woman from Da Nang.
In February 2010, Lafarge sent a cease-and-desist letter to the registrant, seeking a
voluntary return of the domain name to Lafarge.
In reply to the letter, Han brazenly demanded $1.2 million for the return of the
domain name.
=> Lafargedecidedtoproceedwithlegalactionstoretrievethedisputeddomainname.

Source:

http://www.managingip.com/Article/3362435/Vietnam-Landmark-win-in-Lafarge-domain-name-dispute.html

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The issue
1.Did Ms. Ngoc Hans action of appropriating the
domain name "lafarge.com.vn" and re-selling it for
benefits violate the trademark right and negatively
effect the brand name of LAFARGE company?
2.Did those actions of Ms. Ngoc Hans violate the
InformationTechnology Law and especially Decree
No. 72/2013 / ND-CP of the Government on the
management, provision and usage of Internet services
and online information andIntellectualProperty
Law?

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Ruling
Both of the answers of the questions are Yes. The domain name
"lafarge.com.vn" is used on bad faith which is evidenced by M.s Hans offer for
sale of such domain name. It has constituted an unfair competition, infringing the
trademark rights over LAFARGE.
It is supported by Article 76 Information Technology Law and Article 16
of Decree No. 72/2013 / ND-CP and Intellectual Property Law.

Source:

http://www.kenfoxlaw.com/news/496-ip-news/13380-first-case-to-successfully-reclaim-the-domain-name-vn-through-court.html
https://www.vnnic.vn/tranhchaptenmien/policy/quy-%C4%91%E1%BB%8Bnh-v%E1%BB%81-gi%E1%BA%A3i-quy%E1%BA%BFt-tranh-ch%E1%BA%A5p-t
%C3%AAn-mi%E1%BB%81n-qu%E1%BB%91c-gia-vi%E1%BB%87t-nam-vn

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Reasons
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".

Source:

http://www.kenfoxlaw.com/news/496-ip-news/13380-first-case-to-successfully-reclaim-the-domain-name-vn-through-court.html
https://www.vnnic.vn/tranhchaptenmien/policy/quy-%C4%91%E1%BB%8Bnh-v%E1%BB%81-gi%E1%BA%A3i-quy%E1%BA%BFt-tranh-ch%E1%BA%A5p-t
%C3%AAn-mi%E1%BB%81n-qu%E1%BB%91c-gia-vi%E1%BB%87t-nam-vn

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Reasons
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 above signs are identical to its mark
"LAFARGE & device.
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.
Source:

http://www.kenfoxlaw.com/news/496-ip-news/13380-first-case-to-successfully-reclaim-the-domain-name-vn-through-court.html
https://www.vnnic.vn/tranhchaptenmien/policy/quy-%C4%91%E1%BB%8Bnh-v%E1%BB%81-gi%E1%BA%A3i-quy%E1%BA%BFt-tranh-ch%E1%BA%A5p-t
%C3%AAn-mi%E1%BB%81n-qu%E1%BB%91c-gia-vi%E1%BB%87t-nam-vn

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Result

After the grounds with the absence of defendant without any reasons, on 22 April 2014,
People's Court in Da Nang City decided and rendered Judgement No. 05/2014/KDT ST on:

withdrawing the domain name "lafarge.com.vn

giving priority for LAFARGE to register the disputed domain name within 10
consecutive days upon the legal effect of the judgment.

The domain name "lafarge.com.vn has been registered by LAFARGE on 20 May 2014 by
domain name Registrar, Mat Bao.

Source:

http://www.kenfoxlaw.com/news/496-ip-news/13380-first-case-to-successfully-reclaim-the-domain-name-vn-through-court.html
https://www.vnnic.vn/tranhchaptenmien/policy/quy-%C4%91%E1%BB%8Bnh-v%E1%BB%81-gi%E1%BA%A3i-quy%E1%BA%BFt-tranh-ch%E1%BA%A5p-t
%C3%AAn-mi%E1%BB%81n-qu%E1%BB%91c-gia-vi%E1%BB%87t-nam-vn

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Significance of the victory


In light of Lafarge's successful approach to achieving an ex parte hearing, other IP right
holders need only follow suit to seek such a hearing for not only domain name dispute cases
but also for other IP cases.
The success of second case in disputing the domain name marks a positive development
in applying the laws to resolve => more efficient mechanism to address the burning
trademark-domain name disputes in Vietnam.

Source:

http://www.managingip.com/Article/3362435/Vietnam-Landmark-win-in-Lafarge-domain-name-dispute.html

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Thanks for listening


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