INTRODUCTION TO NIGERIAN DOMAIN NAME REGISTRATION
This writer is convinced that some people were simply put on this earth to test the resilience and patience of other. Because why would a business owner, who has registered his trademark, have to go through the stress of engaging in legal battles with a miscreant who decides to register a domain name similar to the business owner’s trademark? This is of course, coupled with the wicked intent of usurping the goodwill acquired by such mark. Isn’t it clear lunacy?
This article would assess the concept of domain names, the conflict between trademark and domain names and mechanisms for the resolution of such conflicts in Nigeria.
It is important to start with a preliminary reminder of what a trademark entails. A trademark is any device (name, sign etc.) which is used to distinguish the goods and services of one, from those of another. Now what is a domain name?
It is extremely undeniable that in present time, most, if not all businesses have moved online. A business’ success is now tied to its online presence. The name it is able to make for itself would translate into increased patronage by consumers thereby increasing its sales. The establishment of a business on the internet has also led to the need to be identified by one’s consumers.
This has necessitated a device akin to a trademark in the internet space for the purpose of that identification. A domain name is the online identity of any business. It is a site’s unique address, created for easy access. Just like a physical address which helps you locate a house, an IP address is used to locate a website. However, an IP address contains numbers that is not easy to recall.
The domain name system therefore converts this complex characters into easy to remember domain names[1]. The domain name is therefore used in identifying the correct IP address to gain access to the desired website. A domain name is part of a business’s overall brand identity. It is like its trademark, but its trademark on the internet. A URL is different from a domain name as a domain name is usually within a URL.
The domain name can be divided into three main elements based on its structure:
The top level domain: This is usually the last part of the web address it is also referred to as the extension. It is usually of three, two of which are most important. The generic top level domain for instance ‘.com .net’ and the country code top level domain, which represents a particular country. In Nigeria, we use ‘.ng’ while for the United Kingdom ‘.uk.’
The last TLD is the Sponsored top level domain, this TLD is usually sponsored by a private entity for instance .edu
The Second Level domain: it is located at the left hand side of the extension. Therefore, it comes just before the extension. For instance, in www.bangle.com bangle is the second level domain. It is the most memorable part of the domain and businesses are usually advised to use their trade names as their second level domain.
If there is one to the left of the second level domain, it is the third level domain, better known as the subdomain. It is the ‘www’ part of most URLs.
Nigerian Domain name Registration,
NIGERIAN DOMAIN NAME REGISTRATION DISPUTES
Problems arise when a business owner tries to use his registered trademark as his domain name and realizes that the name has already been registered by another as their domain name. This problem is aggravated when it is recognized that this individual is merely cybersquatting with the name.
Cybersquatting encompasses the act of registering, selling or using a domain name with the intent of profiting from the goodwill of someone else’s trade name[2] It includes the act of registering such trade name, with the intention of selling it to the original trademark owner at an exorbitant price and also using such name to attract traffic and sell inferior goods to the public.
It is also known as domain name theft or domain squatting. Cybersquatting mostly comes in either of the following: cyber piracy, cyber smearing, typo-squatting, reverse domain hijacking and pseudo cybersquatting.
A trademark owner whose name was taken by a domain name registrant would have more chances of maintaining a case of cybersquatting, if he can show that he has registered his trademark before the person who registered such mark as their domain name.
However, reverse hijacking occurs where the domain name was actually registered first before the trademark. Here, there can be no valid claim by the trademark holder for cybersquatting. Instead, the domain name registrant may bring an action against the trademark holder. As stated above, most businesses have moved online and therefore, there is an increase in cybersquatting activities by miscreants who try to take advantage of the good will acquired by other businesses.
This has necessitated the provision of some mechanisms to resolve disputes between trademark holders and domain name registrants. The end of this resolution of disputes usually ranges from reliefs like an order of court for relinquishing of the domain name, cancellation of the domain name, payment of damages and even in some cases, serving a term of imprisonment or payment of fine or both.
The mechanisms used for resolving these disputes in Nigeria include:
The Uniform Nigerian Domain Name Registration Dispute Resolution Policy:
The World intellectual Property Organization established a set of procedures called the Uniform dispute resolution policy implemented by the Internet Corporation for assigned Names and Numbers (ICANN) on August 26th, 1999. It was established for the resolution of disputes in UN member states.
It involves a process in which a party, usually a trademark holder claims a ‘bad faith’ registration of a domain name against another party. In this case the individual alleges that the other party has infringed on their trademark by registering it as their domain name.
The authority responsible for administering the UDRP is an approved dispute resolution service provider chosen by the registrar of the disputed domain name. The right of the complaint to apply to the ICANN dispute resolution service providers is only exercisable on the fulfillment of three elements:
- That the respondent’s domain name is identical or strikingly similar to the trademark or service mark over which the complainant exercises his rights
- The respondent has no legitimate interest or right in the domain name
- That the said domain name of the complainant has been registered and is being used in bad faith.[3]
Under the UDRP bad faith could entail, for instance, registration of the domain name by the registrant exclusively to force the trademark holder to buy the domain name rather than registration for their own honest use. Bad faith can also be established when such registration is done to usurp and free ride on the goodwill and reputation which the brand name has accrued to itself or simply registering with the sole purpose of disrupting the complainant from doing so.[4]
Once a case of cybersquatting is proved the panel would either, grant the complaint by cancelling the domain name or make an order for the transfer of the domain name. If the grounds mentioned above are not complied with, the panel may refuse the complaint. The decision of the panel may be appealed in court, so far as it is brought to court within the prescribed time. The procedure applies to both generic top level domains and the country code TLDs,
Nigeria Internet Dispute Resolution Association: the NIRA was founded in 2005. It has a NIRA dispute resolution policy which provides a forum for settling conflicting registration of domain name squarely on the ‘.ng’ country code TLD registry to the exclusion of complaint hinged on TLDs like ‘.com or .net.’ The complaint in a domain name dispute situation can file a complaint addressed to the .ng registry via email.
The complaint is filed on very similar grounds as those stated above that must be complied with in the case of the UDRP[5] Where it is proven that such domain name was done in bad faith the NIRA panel will order any of the following:
- Cancellation of the Nigerian domain name registration.
- Transfer of the name to the complainant.
- Changes to the Nigerian domain name registration in line with the terms of the registrant agreement or other legal requirements.
Remedy under the Cybercrimes Act 2015
This is an extremely important legislation in Nigeria, which specially penalizes cybercrime activities to the glee of innocent trademark holders. The act was established in 2015. Cybersquatting is defined under the interpretation section, in Section 58 of the act. However, cybersquatting under the act cannot be fully appreciated without having recourse to Section 25(1) of the act.
The combination of the two definitions of cybersquatting is all-encompassing and includes using a different TLD, but the same or very similar domain name of a company which has a registered trade name. Under Section 25 of the act, a person who is found guilty of cybersquatting or breaching the Nigerian Domain Name laws is liable to a maximum imprisonment of two years or a maximum fine of five million naira, or both.
The act allows action to be brought where the activity took place in Nigeria, by a citizen or resident of Nigeria, or anywhere else, as long as the complainant is a citizen or one who resides in Nigeria. There is also the option of instituting an action under the tort of passing off for the alleged cyber squatter.
CONCLUSION ON NIGERIAN DOMAIN NAME REGISTRATION
To the relief of trademark holders, it is great to see that cybersquatting activities are dealt with properly. This is because not only does it exist as a great source of frustration to trademark holders, but it is also a great source of financial loss. A domain name registrant who intentionally uses the name of a well-known brand may decide to sell inferior goods under the brand’s name, thereby causing the brand to lose patronizing consumers. Therefore, even though it is admitted that the mechanisms provided for dispute resolution for Nigerian Domain name Registration, each have their individual shortcomings, they have helped greatly in curbing cybersquatting activities.
[1] https://www.hostinger.com/tutorials/what-is-a-domain-name last accessed on the 19th of September 2024.
[2] “Trademark and domain names conflicts in Nigeria: how can corporate entities win this fight?” U.B Okpa, A.M. Amadi, E.L. Ndubueze.
[3] Paragraph 4(a) of the UDRP Rules, ICANN 1999
[4] Ibid, paragraph 4(b)
[5] Paragraph 4(a) schedule A of the NIRA rules, 2008
Nigerian Domain Name Registration.
AUTHOR; JUSTICE OJIENOH