South-East Asia IPR SME Helpdesk

Case Study 54 - Infringement of BMW’s domain name in Vietnam

Background

BMW has encountered numerous local cyber-squatters and registrants acting in bad faith, seeking to take advantage of the globally famous name ‘BMW’ by integrating it into their domain names. BMW actively maintains control of its brand online.

BMW found out that the domain names bmw.com.vn, bmwmotorrad.com.vn, bmw-motorrad.com.vn, bmwmotorrad.vn and bmw-motorrad.vn had been registered by some professional Vietnamese cyber-squatters.

Actions taken

  • The domain name bmw.com.vn

BMW worked with the Ministry of Science and Technology (MOST) until they came to a decision on applying remedial measures. Among other things, they ordered the cyber-squatter to return the domain name bmw.com.vn to Vietnam’s domain name registry, the Vietnam Internet Network Information Center (VNNIC). When the cyber-squatter did not return the domain name as ordered, MOST asked the VNNIC to withdraw the domain name itself. On 21 April 2017, the VNNIC canceled the cyber-squatter’s ownership of the domain name.

Following this victory, BMW proceeded with the more challenging cases below.

  • The domain names bmwmotorrad.com.vn, bmw-motorrad.com.vn, bmwmotorrad.vn and bmw-motorrad.vn

A lawsuit against the local cyber-squatter was brought to the Ho Chi Minh City Court. BMW’s argument was based on the provisions related to unfair competition in Vietnam’s IP Law, specifically Article 130.1(d), which defines the following as an act of unfair competition:

Registering or appropriating the right to use or using domain names identical or confusingly similar to protected trade names or trademarks of others … for the purpose of appropriating the domain names, and benefiting from or prejudicing the reputation and popularity of the respective trademarks or trade names ....’

The defendant argued that the ‘BMW’ in his domain names was not related to the BMW trademark, and even claimed that it stood for ‘Be My Wife’. He also claimed that he had no intention of making money from registering and using the domain names.

BMW argued that he was using the domain names in bad faith: as the BMW trade mark is well-known around the world, as well as in Vietnam, he could not possibly have been unaware of its prestige and reputation. Thus, BMW demanded:

  1. The surrender of the disputed domain names;

  2. Compensation for damages of VND 500 million;

  3. Recovery of legal fees of VND 200 million;

  4. A public apology in the mass media.

The judging panel sided with BMW’s claims 1, 3 and 4; ordering the revocation of the domain names, and requiring the defendant to pay the legal fees and make a public apology in a high-circulation newspaper. BMW’s claim for damages, however, was denied, due to the lack of evidence of actual (monetary) damages. The court also officially recognised the well-known character of the BMW trademark in Vietnam, which significantly extends the protection scope of the BMW mark, and will be beneficial in future enforcement matters. On 22 June 2020, the Superior Court of HCMC confirmed the first-instance judgment.

Lessons learned

This was the most severe punishment ever dealt out by a Vietnamese court to a cyber-squatter, and the VND 200 million in legal fees is quite significant to an individual in Vietnam.

It is worth noting that reclaiming domain names in Vietnam can be effectively achieved via various enforcement routes, such as through Uniform Domain Name Dispute Resolution Policy (UDRP) proceedings at the World Intellectual Property Organization (WIPO), the civil courts, the MOST, and informal measures like cease-and-desist letters.

In accordance with IP law, unfair competition can be taken as grounds for reclaiming a domain name in Vietnam.

This was also the first time a Vietnamese court formally recognised a well-known trade mark.

Reference: Tilleke & Gibbins, Vietnam

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