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Manage your Intellectual Property in South-East Asia

Case Study 5 - Registering your domain name in potential future markets in Southeast Asia

Background

A Swedish producer of internet games is a market leader in the development and promotion of online social networking games for teenagers. The company has millions of teenage internet users worldwide, including in Southeast Asia.

In 2010, the company registered the names of their most popular games under .cn (China), .kr (Korea) and .jp (Japan), as those were considered the primary Asian markets for their games. It neglected to register its names in the ccTLDs of Vietnam (.vn and .com.vn), Singapore (.sg and com.sg), and Laos (.la).

In 2012, when the company in question realised that they had more than 100,000 users in these three countries in Southeast Asia, they subsequently decided that they should register these ccTLDs and promote support services in local languages online, using the local domain suffixes. To their surprise, the domain names had already been registered to third parties.

The company did not have any trade mark registrations in any of the three countries, but had become a famous brand name for social media games for teenagers worldwide.

Advice

The Swedish company was informed that unlike other countries in the ASEAN region, Laos, Singapore, and Vietnam offer domain name dispute resolution through local arbitration centres. The company was advised to contact a local expert that could assist them in filing the domain name disputes.

The Swedish gaming producer had to prove, for each case, that:

  1. The domain name was identical or confusingly similar to one of their own trade marks or service marks for which they held the rights;
  2. The other party dis not have any rights or legitimate interests in the domain name; and
  3. The other party registered the domain name in ‘bad-faith’ (did not intend to use it as part of their legitimate business).

Outcome

In two of the three cases, it was considered impossible to provide evidence that the domain names were registered and used in bad faith, as there was no content on the websites under these domain names. The company was therefore advised to contact the registrants directly to make them an offer for each domain name. In one of the cases the registrant agreed to sell the domain name for EUR 1,500, which is a typical price for a domain name as it corresponds to the amount it costs to file a dispute at arbitration centres.

In the other case, the Swedish company never heard from the registrant, and therefore instead decided to register a longer version of their domain name, by adding the country name ‘Vietnam’ to the domain name.

In the third case, the registrant was found to be displaying a website under the domain name, providing links to the Swedish online game, as well as to other competing online games. This was an evidence of bad-faith use, and the Swedish company won the dispute, and then had the domain name transferred to them. However, the costs of filing the disputes and the costs to the law firm in total amounted to more than EUR 4,000.

Lessons Learnt

  • Register your domain names in potential future markets in Southeast Asia
  • Domain names are based on a ’First Come – First Filed’ basis (the first-to-file rule)
  • A domain name registration is typically priced at EUR 50-100 per year, if one uses a larger European domain registrar
  • Not all countries in the ASEAN region offer Domain Name Arbitration
  • The price of one domain name dispute typically equals the price of 10 domain names registered for five years
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