DOMAIN NAME DISPUTE: LAFARGE V. HAN PHAM

10:53 am | |

LAFARGE operates in the field of manufacturing, distribution of building materials and design, construction of civil and infrastructure works. The company has a large market in over 64 countries. In 2001, the company officially operated in Ho Chi Minh City, Vietnam.

Up to 2014, the company had been actively worked in the field of cement production and plaster ceiling in Vietnam. In 2014, Lafage sued Ms. Han Pham for registration of the domain name lafage.com.vn that is identical to the company’s famous trademark which they held the rights. The complaint was filed based on the following evidences and findings:

  • The Defendant has registered a domain name that is identical or confusingly similar to the Lafarge marks (Minutes No. 0258451 dated July 27, 2010 between the Market Management Department of Da Nang City and Mr. Dong Sy Phung – representing Ms. Han Pham).
  • The act of using “lafarge.com.vn” as a website to advertise the construction materials and construction consultancy services, without the consent of Lafarge, is a trademark infringement (Assessment No. NH194 / 10YC / KLGD, by the Intellectual Property Institute).
  • An internet user who clicks on “lafarge.com.vn” would be led to another webpage entitled lafarge.jimdo.com. Both home page and affiliate page read the letter “L” in bold, large font on a light blue background. Under the character “L” read the word “Lafarge” in black and below read “.com.vn”. Lafarge stated that the image is identical to the “Lafarge and Image” marks that is protected under the company’s name.
  • The Defendant has no expressing contact with Lafage because there was no consideration and authorization. Moreover, Ms. Han is not doing business in the field of cement and building materials.
  • The Defendant appears to have registered the domain name afarge.com.vn for the purpose of squatting the domain name from Lafarge, impeding the company from registering domain names and selling it for profit.
  • In addition, the website “lafarge.com.vn” leads to another advertising website which advertises construction materials. This act harms the reputation of the Plaintiff.

Despite repeated attempts to locate Defendant for service of process, the court finally granted the Plaintiff an ex parte hearing.  Based on the case’s evidences and the provisions of law on settlement of disputes over Vietnamese national domain names “.vn”, the Court ruled:

  • At the time of litigation and acceptance of the case, the trademarks “LAFARGE”, “LAFARGE and image” are under protection in Vietnam.
  • Lafarge and the Defendant have no act of authorization or commercial agent. The Defendant has no direct or indirect relationship to LAFARGE marks.
  • The Defendant is alleged to have registered Lafarge.com.vn in order to squat the domain name which obviously impedes Lafarge who rightfully owns Lafarge trademarks.
  • The Defendant is alleged to have registered the domain name Lafarge.com.vn in “bad faith” with the purpose of selling it for profit, unfair competition and trademark infringement.

On this finding ground, the Court granted summary judgment in favor of Lafage on all claims and ordered the domain name be returned to Lafarge. On April 22, 2014, Da Nang People’s Court issued the Decision No. 05/2014 / KDTM-ST ordered that the domain name Lafarge.com.vn be withdrawn from the Defendant to give priority to Lafarge Company to commence registration within 10 consecutive days since the judgment comes into legal force. Upon expiration of this term, the domain name is registered freely. Due to no appeals and protests, on 13/05/2014, the judgment has entered into force by law.

Nowadays, the domain name Lafarge.com.vn belongs to Lafarge Company under registrar Mat Bao.

Lesson learnt

  • Register your trademarks and domain names when entering Vietnam.
  • The cost for a domain name registration is about EUR 50-100 per year.
  • Vietnam has not yet offered Domain nam Arbitration. If you domain name is squatted, contact a local lawyer.
  • The price of one domain name dispute resolution typically equals the price of 10 domain names registered for five years.