Maritime Law · 18.12.2017

DOMAIN NAME DISPUTE: LAFARGE V. HAN PHAM

Domain Name Dispute: Lafarge v. Han Pham 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…

Lawyer UnilawReading time: 13 min

By Lawyer Nguyen Nhu Hai – UniLaw LLC

Domain Name Dispute: Lafarge v. Han Pham

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, Lafarge sued Ms. Han Pham for registration of the domain name lafarge.com.vn that is identical to the company’s famous trademark which they held the rights. The dispute is one of the earliest and most instructive examples of how Vietnamese courts approach cybersquatting claims involving a foreign trademark holder and a domestic domain name registrant, and it remains a useful reference point for any multinational entering the Vietnamese market today.

Before examining the specific findings of the Da Nang People’s Court, it is worth stepping back to understand why disputes of this kind arise so frequently in Vietnam, and why the legal mechanism used to resolve them differs markedly from what many foreign investors expect.

Why Cybersquatting Happens So Often in Vietnam

Vietnam’s “.vn” namespace operates on a first-come, first-served registration model administered through licensed registrars such as Mat Bao, PA Vietnam, and others accredited by the Vietnam Internet Network Information Center (VNNIC). Unlike trademark registration, which requires an applicant to demonstrate a bona fide commercial interest and clear the mark against prior rights, domain name registration under the “.vn” system does not, at the point of registration, require any proof that the registrant has a legitimate connection to the name being registered. This structural gap creates fertile ground for opportunistic registrants who monitor well-known foreign brands entering or expanding in Vietnam and register the corresponding domain name before the brand owner does.

In the Lafarge case, the Defendant registered lafarge.com.vn years before the dispute was filed, at a time when Lafarge’s Vietnamese operations were already well established. The registration was not an isolated administrative act; the evidence showed active use of the domain to redirect visitors to a separate website, lafarge.jimdo.com, which itself displayed a stylized “L” mark, the word “Lafarge” in black lettering, and the string “.com.vn” underneath — a visual composition the Plaintiff argued was deliberately designed to mimic its own “Lafarge and Image” mark. This is a textbook illustration of how cybersquatting is rarely passive; the domain is frequently activated commercially, either to divert traffic, to advertise unrelated or competing goods and services, or to create leverage for a future sale back to the rightful trademark owner.

The Legal Basis: Trademark Rights Versus Domain Registration Rights

A recurring misconception among both domestic and foreign parties is that a validly registered “.vn” domain name automatically confers a right to use that name indefinitely, immune from challenge. Vietnamese law on the settlement of disputes over national domain names does not support this view. Registration of a domain name is, procedurally, an administrative act performed by a registrar; it does not adjudicate or extinguish any pre-existing intellectual property rights that a third party may hold in the corresponding word or mark. Where a domain name is identical or confusingly similar to a trademark that is already protected in Vietnam, and the registrant has no legitimate right or justifiable interest in the name, and the registration or use is shown to be in bad faith, the domain name can be ordered returned to the trademark owner through the courts.

These three elements — identity or confusing similarity, absence of legitimate interest, and bad faith — mirror the structure of dispute policies used internationally, such as the UDRP framework applied by WIPO in cross-border domain disputes. The Lafarge case shows how Vietnamese courts apply an analogous three-part test through domestic litigation rather than an arbitration panel, since Vietnam, at the time of this judgment, had not yet established a dedicated domain name arbitration mechanism comparable to WIPO’s system.

Establishing Identity and Similarity

The first element was straightforward in this case. The domain name lafarge.com.vn reproduced the Plaintiff’s trademark in its entirety, with only the generic country-code suffix “.com.vn” appended. Vietnamese courts, consistent with international practice, generally disregard such technical suffixes when comparing a disputed domain name to a protected trademark, because the suffix carries no distinctiveness of its own and does not diminish the likelihood that consumers will associate the domain with the trademark owner. The presence of the trademark “LAFARGE” and “LAFARGE and image,” both under protection in Vietnam at the time the case was filed and accepted, gave the Plaintiff standing to challenge the registration on the basis of infringement rather than mere administrative preference.

Absence of Legitimate Interest

The second element required Lafarge to show that Ms. Han Pham had no legitimate right or justifiable interest in using the name “Lafarge.” The evidence assembled for the case addressed this directly: there was no license, distribution agreement, or any form of authorization between Lafarge and the Defendant; the Defendant was not shown to be engaged in the cement or building materials business in any capacity that would independently justify use of the name; and the market management authorities’ own minutes, recorded years before the litigation, already documented the registration as connected to the Defendant without any commercial basis tied to Lafarge’s business. Separately, an assessment obtained from the Intellectual Property Institute concluded that using “lafarge.com.vn” to advertise construction materials and consultancy services, without Lafarge’s consent, constituted trademark infringement. Taken together, these findings left little room for the Defendant to argue an independent, good-faith commercial rationale for holding the domain.

This is a critical lesson for any brand owner facing a similar dispute: legitimate interest is not simply the absence of authorization; it is the presence of a demonstrable, independent business reason for the registrant to hold that specific name. In the Lafarge case, no such reason existed on the record, which meaningfully strengthened the Plaintiff’s position before the second element — bad faith — was even reached.

Inferring Bad Faith from Circumstantial Evidence

The third and most consequential element of the analysis — bad faith — is rarely proven through a smoking-gun admission. Courts and arbitration panels alike must draw inferences from a constellation of circumstantial facts, and the Lafarge case illustrates this inferential process well. The Defendant’s registration of “lafarge.com.vn” was not an isolated administrative act divorced from commercial context; it was tied, according to the market management authorities’ own records, to the use of the domain in connection with advertising construction materials and consultancy services. This is precisely the same industry in which Lafarge’s registered trademarks operated. The convergence of three facts — a domain name identical to a well-known trademark, an industry of use that overlapped directly with the trademark owner’s core business, and the complete absence of any license or commercial relationship — created a pattern that courts in Vietnam, much like UDRP panels internationally, treat as strong circumstantial proof of bad faith, even without a confession of intent from the registrant.

The conclusion reached by the Intellectual Property Institute reinforced this inference rather than existing as a separate, disconnected finding. An expert body’s determination that the use of “lafarge.com.vn” for advertising construction materials and consultancy services, absent Lafarge’s consent, amounted to trademark infringement functions in Vietnamese practice as more than a technical opinion — it becomes a piece of documentary evidence that a court can rely on to establish both the absence of legitimate interest and, cumulatively, the bad-faith character of the registration and use. In other words, the same expert assessment served double duty across two of the three elements, which is a common feature of how Vietnamese courts build a cohesive narrative of infringement rather than treating each prong of the test as a hermetically sealed inquiry.

Statutory Text Versus Judicial Practice

Here a genuine gap between the letter of Vietnamese law and the practical mechanics of adjudication becomes visible, and it is worth stating plainly for anyone advising a client on domain name strategy. Vietnamese legislation governing trademark protection and unfair competition does not, on its face, set out a dedicated three-part “identity, legitimate interest, bad faith” test for domain name disputes in the way that the UDRP Policy does for generic top-level domains. The statutory framework speaks in terms of trademark infringement, unauthorized use of protected signs, and acts of unfair competition — broad causes of action that were never drafted with domain names specifically in mind. What the Lafarge judgment demonstrates is that Vietnamese courts, lacking a purpose-built domain arbitration mechanism at the time, effectively imported the substance of the international three-part test through the back door of ordinary civil litigation, using existing trademark infringement and unfair competition provisions as the vehicle to reach a functionally equivalent outcome.

The practical consequence of this gap is significant for litigants. Under a UDRP-style administrative proceeding, a complainant typically expects a streamlined paper-based process, a panel decision within a matter of weeks, and a remedy limited to transfer or cancellation of the domain name. In the Lafarge dispute, by contrast, the Plaintiff had to proceed through the ordinary civil court system, which meant marshalling evidence — trademark registration certificates, the market management authorities’ minutes documenting the registration and its connection to the Defendant, and an independent expert assessment from the Intellectual Property Institute — to the evidentiary standard required in domestic litigation, rather than the somewhat more relaxed administrative standard typical of arbitration panels. The law “on the books” gave Lafarge trademark rights and a right of action against infringement; it did not hand the company a fast, specialized forum. The court, in practice, had to construct the equivalent of a bad-faith finding using tools designed for general commercial disputes, which naturally extended the time and cost of resolution compared to what an international brand owner might experience filing a UDRP complaint against a “.com” domain.

This distinction matters for foreign investors and multinational brand owners assessing risk in the Vietnamese market. A company accustomed to the relative speed of WIPO arbitration for generic domains needs to recalibrate expectations for “.vn” country-code disputes that predate or fall outside any dedicated administrative mechanism: the standard of proof, the procedural timeline, and the range of available evidence all shift toward the conventions of civil litigation. The upside, as the Lafarge outcome suggests, is that a well-documented case — combining official administrative records, independent expert opinion, and clear trademark registration — can still succeed on the merits even without a specialized forum, provided the evidentiary groundwork mirrors what a UDRP panel would expect to see in substance, if not in procedural form.

What the Evidentiary Record Teaches Brand Owners

Beyond the doctrinal comparison, the case offers a practical checklist for any company confronting a similar cybersquatting scenario in Vietnam. First, secure and maintain trademark registrations covering the relevant classes before a dispute arises; Lafarge’s ability to invoke “LAFARGE” and “LAFARGE and image” as protected marks at the time the case was filed was foundational to every subsequent argument. Second, do not underestimate the evidentiary weight of administrative records generated outside the litigation itself — the market management authorities’ minutes, created years before the case reached court, became an important anchor point precisely because they were contemporaneous and independent of the litigation strategy. Third, an expert assessment from a recognized body such as the Intellectual Property Institute can carry substantial persuasive value, functioning almost as a bridge between technical trademark analysis and the court’s ultimate legal conclusion on infringement and bad faith.

None of these evidentiary components exists in isolation under Vietnamese procedural law; the Civil Procedure Code requires parties to substantiate their claims with admissible evidence, and the burden remained on Lafarge, as Plaintiff, to prove each element of its case rather than shifting that burden to the Defendant by default. The judgment’s structure — moving methodically from trademark identity, to the absence of any legitimate justification, to the pattern of conduct supporting an inference of bad faith — reflects how a Vietnamese court operationalizes a globally recognized dispute framework using purely domestic procedural and substantive law, without any explicit statutory mandate to do so.

Frequently Asked Questions

Is resolving a “.vn” domain dispute in court the same as a UDRP proceeding?

Not exactly, though the underlying logic often converges. UDRP is a specialized, expedited administrative mechanism built specifically for domain name disputes, with its own evidentiary shortcuts and remedies limited to transfer or cancellation of the domain. Litigating a “.vn” dispute in a Vietnamese court, as the Lafarge case illustrates, proceeds instead under the general Civil Procedure Code and substantive trademark law. The court is not bound by any UDRP-style checklist, yet the reasoning it applies — identity between the mark and the domain, absence of any legitimate justification for the registrant’s use, and a pattern of conduct pointing to bad faith — tracks the same substantive questions a UDRP panel would ask. The difference lies mainly in procedure and forum, not in the underlying legal logic.

What kind of evidence do Vietnamese courts expect in a domain name or trademark dispute?

Based on how the Lafarge judgment was built, three categories of evidence carried particular weight: valid trademark registrations covering the relevant classes at the time the dispute arose; administrative records created independently of the litigation, such as market management authorities’ minutes documenting the disputed conduct; and an expert assessment from a recognized body like the Intellectual Property Institute, which helped translate technical trademark analysis into terms the court could rely on for its infringement and bad-faith findings. None of this evidence operates on its own — the Civil Procedure Code places the burden on the plaintiff to substantiate every element of the claim, so the strength of a case often turns on how well these three strands are assembled and presented together.

Can a company still win a cybersquatting case in Vietnam if there is no dedicated administrative mechanism for the domain in question?

Yes, provided the evidentiary groundwork is strong enough to satisfy civil litigation standards. The Lafarge outcome is instructive precisely because it did not rely on any specialized dispute-resolution forum; the plaintiff succeeded on the merits in ordinary court proceedings by combining registered trademark rights, independent administrative documentation, and expert opinion. This suggests that the absence of a UDRP-equivalent process for a particular category of domain dispute is not, by itself, a barrier to relief — it simply means the case must be built with civil litigation timelines and evidentiary conventions in mind from the outset.

Do I need a Vietnam litigation lawyer to bring this type of case, or can it be handled administratively?

Where no specialized administrative channel applies, the matter necessarily proceeds through the courts, which means engaging a Vietnam litigation lawyer early is important rather than optional. Because the burden of proof rests squarely on the plaintiff and the court will not fill evidentiary gaps on its own, counsel familiar with how Vietnamese courts have handled trademark and domain disputes — including how they weigh administrative records and expert institute opinions — can meaningfully affect whether the evidentiary record meets the standard the judgment in this case ultimately required.

What should a brand owner do before a dispute arises, based on this case?

Register and maintain trademark protection over the relevant classes well before any conflict surfaces; in the Lafarge matter, having “LAFARGE” and “LAFARGE and image” already registered at the time the case was filed was the foundation for every argument that followed. Beyond registration, it is worth preserving any independent administrative documentation of infringing conduct as it occurs, since records created contemporaneously and outside the litigation itself tend to carry more persuasive weight than materials assembled after the fact specifically for the lawsuit.

Final Thoughts

The Lafarge case does not announce a new rule so much as it demonstrates how an established body of trademark and unfair competition principles — the same principles that inform UDRP practice internationally — can be operationalized entirely through Vietnam’s domestic civil procedure when no specialized administrative forum is available. For brand owners, the practical takeaway is less about which mechanism technically applies and more about whether the evidentiary record, once assembled, would persuade a decision-maker under either standard. That means securing trademark registrations early, preserving independent documentation as disputes unfold, and seeking expert assessment where the technical questions warrant it.

If your organization is facing a domain name conflict, a suspected case of cybersquatting, or a broader trademark enforcement question in Vietnam, Unilaw’s litigation team can help assess the strength of your existing evidence and map out a realistic path forward — whether that path runs through an administrative mechanism or, as in the case discussed here, through the ordinary courts. Contact Unilaw to discuss the specifics of your situation and how Vietnamese law and procedure would apply to it.