Cybersquatting and Protection Of Domain Names In Nigeria – Oluwafunmilayo Mayowa

Intellectual Property

23rd October 2019

 

Olufunmilayo Mayowa[1]

 

CYBERSQUATTING AND THE PROTECTION OF DOMAIN NAMES IN NIGERIA

 

  1. INTRODUCTION

The increase in the usage of the internet as well as other social media platforms in contemporary times has necessitated a surge in the online presence of most businesses all over the world. The Domain name system is one of the most essential tools of the internet used by businesses to reach existing and prospective customers in various geographic locations.

There are no strict requirements for the registration of a domain name, and this therefore implies that a person can register any name as a domain name notwithstanding that such name may constitute the trademark of another user. This has become problematic for businesses and individuals who own existing registered trademarks but which have been used as domain names by other users, especially cyber-squatters. There is an obvious need for the introduction of suitable legal protections and remedies against infringement of trademarks by innocent infringers and cyber-squatters.

This article will be discussing the importance of domain names, problem of cybersquatting in Nigeria, cyber-squatting as a form of trademark infringement and available remedies.

  1. DOMAIN NAMES

Simply put, a domain name is a unique internet address which helps internet users to locate or access a particular website.  A domain name serves similar functions as a physical public address; it enables its users to easily find persons or computers on the internet. Examples of some popular domain names include: www.facebook.com, www.amazon.com, www.mercedes-benz.com .

Domain names are intangible assets and as such falls under the category of intellectual Property. Domain names are similar to trademarks; as they assist in identifying a particular brand (in this case an internet address) and to refer users to it.  Like a trademark, a domain name indicates a connection in the course of trade between the goods or services and the proprietor as well as enables direct access to the goods or services from anywhere in the world. It is therefore equally essential to protect a domain name from infringement in the same manner as trademarks.

  1. IMPORTANCE OF DOMAIN NAMES

Business success is arguably impossible without the internet in this modern era[2] and with the advent of the internet, businesses can reach and keep up with existing and prospective customers through domain names. Domain names are considered to be valuable marketing tools which gives professional credibility and visibility to brands.[3] The importance of domain names was rightly emphasized by Bill Gates, the founder of Microsoft, when he said that “Domains have and will continue to go up in value faster than any other commodity ever known to man”.[4]

Proprietors of domain names often prefer to use names that are easily identifiable and refer or relate to their brand name or trademarks. Domain names are therefore often regarded as part of the invaluable asset of a business.

  1. REGULATION OF DOMAIN NAMES IN NIGERIA

Although the Cybercrimes Act[5] (the ‘Act’) makes provision for the criminalization, cybersquatting and other computer-related offences in Nigeria, the Act does not provide for the establishment of a regulatory agency responsible for implementing the provisions of the Act.[6]

Notwithstanding this major loophole in the Act, certain regulatory agencies are indirectly responsible for the regulation of domain name system in Nigeria. One of such agencies is the National Information Technology Development Agency (NITDA) which is established under the NITDA Act to create a framework for the planning, research, development, evaluation and regulation of information technology practices in Nigeria.[7]

The Nigeria Internet Registration Association (NIRA), an incorporated trustee, is also one of the regulatory bodies, charged with the management of Nigeria’s country code Top Level Doman Name (ccTLD), dotng.  Although NIRA lacks any express statutory protection, nevertheless, a domain name applicant would ordinarily be expected to conduct an availability search by taking advantage of the search feature on the domain name registrar’s website (on NIRA.org.ng).[8] Upon registration of such domain name, there is protection against the use of identical and similar names as IP addresses by another person, both through NIRA and the Nigerian Courts.[9]

Globally, the Internet Corporation for Assigned Names and Numbers (ICANN) is responsible for overseeing domain name registration. ICANN has implemented thorough standards of acceptance to ensure that the assigning of domain names is done with much more scrutiny. ICANN has also put solid requirements for domain name recovery in place for instances of trademark registration lapses by trademark owners.[10]

ICANN adopts the Uniform Domain Name Dispute Resolution Policy (UDRP). The UDRP was prepared by the World Intellectual Property Organisation (WIPO) for the resolution of disputes involving the registration of internet domain names. The UDRP enables trademark owners to bring an action against domain names which infringes on its trademarks. Under the UDRP, ICANN can cancel an improperly registered domain name or order a losing party to transfer the domain name to the winning party. The purpose of UDRP is to provide a cheaper and more efficient mechanism for resolving cybersquatting disputes. It is deemed to be a better alternative to litigation of disputes involving domain names. The procedure, however, does not preclude the filing of a lawsuit, either during or after the proceeding.

  1. DEFINITION OF CYBERSQUATTING

Due to the lack of a formal system of registration, anyone can register a domain name. The registrars are not mandated to ensure that domain names including trademarks are purchased only by trademark owners nor do they require previous commercial use of the name before registering it, it is assigned on a first come first served basis. This loophole gave rise to cybersquatting.

Cybersquatting, also known as domain squatting, is the practice of registering domain names, especially well-known company or brand names or trademarks, in the hope of reselling them at a profit. It is used to describe an individual or company who intentionally purchases a domain and holds that domain with the sole intention of selling it at a premium price.[11] There are several variations of cybersquatting; and it could refer to advertisers who mimic domain names that are similar to popular, highly trafficked websites.[12]

In Nigeria, Cybersquatting is defined as:

“the acquisition of a domain name over the internet in bad faith to profit, mislead, destroy reputation and deprive others from registering the same, if such domain name is: (1) similar, identical, or confusingly similar to an existing trademark registered with the appropriate government agency at the time of the domain name registration; (ii) identical or in any way similar with the name of a person other than the registrant, in the case of a personal name; and (iii) acquired without right or with intellectual property interests in it.[13]

From the definition above, it can be deduced that before an action can amount to cybersquatting under the Nigerian Cybercrimes Act 2015 (the Act), such a person must have:

  1. acquired the domain name in bad faith,
  2. with the intent to make profit, mislead, destroy or prevent others from registering the domain name,
  3. the acquired domain name must be similar or identical to an existing registered trademark or the name of a person other than the registrant, in case of a personal name,
  4. the domain name was acquired without right or with intellectual Property interests in it.

In other words, for an action against cybersquatting to succeed in Nigeria, the above conditions must be proved.  However, it is not expressly clear whether these requirements should be conjunctively or disjunctively proven.

  1. NOTABLE INCIDENCES OF CYBERSQUATTING

A typical cyber-squatting case was the one that played out between eBay v. Du Hongxia.[14] The complainant eBay brought an action before the WIPO Arbitration and Mediation Centre on November 17, 2014 against the respondent, Du Hongxia/Liu Yujiao/WHOIS AGENT. The Respondent had registered the domain names of several popular brands such as BMW, NIKE, SONY and eBay – all well-known and popular trademarks.

The Panel reached a verdict that the domain names were registered and being used in bad faith and ordered the domain names to be transferred to the Complainant.

The first cybersquatting case reported in Africa was between UEFA v. Funzi Furnitures.[15] The complainant Union des Associations Europeennes de Football (UEFA) is the governing body for European football and the organizer of an international football competition popularly known as “Champions League”. The complainant is also the registered proprietor of the International Trade Mark Registration of the name ‘Champion League’ in several countries.[16]

The Respondent, Funzi Furnitures, registered the domain name Champions League in 1998. In April 2000, the respondent wrote to the complainant offering to sell to it the registered domain name at the sum of $1,450,000. Following the break-down of negotiations between both parties, the complainant lodged its complaint with WIPO.

After both parties had tendered their evidence, the WIPO panel held that:

  • the domain name was identical and confusingly similar to the trademark of the complainant;
  • the respondent had no rights or legitimate interest in the domain name, and
  • the domain name was registered and was being used in bad faith.

The panel consequently gave judgment in favour of the complainant and ordered that the domain name should be transferred to the complainant.

Some other reported cyber-squatting cases in Nigeria are as follows:

  1. The Nigerian Air v. Olumayowa Elegbede

Upon the launching of the National Carrier/Airline for Nigeria by the Federal Government on 18th July 2018, one Olumayowa Elegbede quickly purchased the domain names; NigeriaAir.ng and NigeriaAir.com.ng on the same day and subsequently put them up for sale.[17] Although no legal action was taken against Olumayowa Elegbede, his action amounts to an obvious case of cyber-squatting as defined under section 58 of the Cybercrimes Act.

  1. Linda Ikeji v. Emmanuel Efremov.

In 2011, Emmanuel Efremov, the owner of a media outfit called 9jalife, registered the domain name lindaikeji.net. Linda Ikeji is a popular Nigerian blogger who owns and runs a blog named after her (www.lindaikejisblog.com) and averages an estimated $900,000.00 in income each year.[18] Emmanuel was using her name and prestige to earn himself advertisement revenue. Upon revelation of this fact, Emmanuel redirected the site to Linda’s blog in an attempt to erase evidence of the cyber-squatting activities. There is no record of any action brought against him by Linda Ikeji.[19]

  1. REMEDIES FOR CYBERSQUATTING

Cybersquatting is a criminal offence under the Cybercrimes Act. Section 25 (1) of the Act provides that:

“Any person who, intentionally takes or makes use of a name, business name, trademark, domain name or other word or phrase registered, owned or in use by any individual, body corporate or belonging to either the Federal, State or Local Governments in Nigeria, on the internet or any other computer network, without authority or right, and for the purpose of interfering with their use by the owner, registrant or legitimate prior user, commits an offence under this Act and shall be liable on conviction to imprisonment for a term of not more than 2 years or a fine of not more than N5,000,000 or both fine and imprisonment.

The Act further stipulates that in awarding penalty against a cyber-squatter, the court shall have regard to the following factors:[20]

  1. A refusal by the offender to relinquish, upon formal request by the rightful owner of the name, business name, trademarks, domain name, or other word or phrase.
  2. An attempt by the offender to obtain compensation in any form for the release to the rightful owner for use of the name, business name, trademarks, domain name or other word or phrase.

In addition to the above penalty, the Act also empowers the Federal High Court to make an order directing the offender to relinquish such registered name, mark, trademark, domain name, other word or phrase to the rightful owner.[21]

Unlike some jurisdictions, the Nigerian Act does not make provision for civil remedies in the form of damages against a cyber-squatter for related offences.[22]

  1. DOES CYBERSQUATTING CONSTITUTE TRADEMARK INFRINGEMENT

The definition of a mark under section 67 of the Trade Marks Act[23] is quite broad and can be deemed to apply to use of domain names. Section 67 provides that a trademark is:

“a mark used or proposed to be used in relation to goods for the purpose of indicating, or so as to indicate, a connection in the course of trade between the goods or services and some person having the right either as proprietor or as registered user to use the mark, whether with or without any indication of the identity of that person….”

Therefore where a domain name is used in relation to any good or service which is identical or confusingly similar to an existing trademark and is likely to cause confusion, such use of a domain name can be said to be an infringement of the registered trademark. [24]

The Cybercrimes Act also prohibits the registration of a domain name that is similar to an existing trademark registration. The Cybercrimes Act defines the offence of cyber-squatting as including the acquisition of domain names that are, “similar, identical, or confusingly similar to an existing trademark registered with the appropriate government agency at the time of the domain name registration.”[25] This definition therefore clearly creates a link between cybersquatting and trademark infringement.[26]

  1. CONCLUSION

Although Cyber-squatting has been criminalized in Nigeria under the Cybercrimes Act, there are no records of any action taken against cyber-squatters so far. This might be as a result of the inadvertence of the legislature in not establishing an enforcement agency under the Cybercrimes Act. It is therefore suggested that an enforcement agency should be established and empowered to arrest and prosecute cyber-squatters and to also enforce the provisions of the cybercrimes Act in general.

It is also pertinent that the Cybercrimes Act[27] should be amended to make provision for a proper and regulated procedure for the registration of domain names in Nigeria. A system should be put in place, like a comprehensive electronic database, such that domain names which conflict with existing trademarks can be easily flagged before registration.

 

 

 

_____________________________________________________________________

For further information on this article and area of law, please contact

Oluwafunmilayo Mayowa at: S. P. A. Ajibade & Co., Lagos by telephone

(+234.1.810.952.8293 or  234.12703009; 14605091; 14605092)

omayowa@spaajibade.com

www.spaajibade.com

 

[1]   Oluwafunmilayo Mayowa, NYSC Intern, SPA Ajibade & Co., Lagos, Nigeria

[2] Vijay Sharma, “Importance of Internet to Business” available at http://www.klientsolutech.com/importance-of-internet-in-business/ accessed 4th September 2019.

[3] Domain.Com, “Why Having a Domain name is important” available at https://www.domain.com/blog/2018/11/08/why-a-domain-name/ accessed 19th August 2019.

[4] Lexology, “Domain names: the new virtual address” available at https://www.lexology.com/ibrary/detail.aspx?g=ce296210-ea19 accessed 19th August 2019.

[5] Cybercrimes (Prohibition, Prevention, Etc) Act, 2015.

[6] Joseph Onele and Emmanuela Onyilofor, ‘Domain Names and Cybersquatting: Implications for Trademarks in Nigeria’ (2018) The Gravitas Review of Business & Property Law Vol. 9 No. 4 p. 118.

[7] See Section 6 of the NITDA Act.

[8] Joseph Onele and Emmanuela Onyilofor, op. cit., at p. 119.

[9] Ibid.

[10] Ibid.

[11] Computer Hope, “Cybersquatting” available at

https://www.computerhope.com/jargon/c/cybersqu.htm accessed 9th September 2019.

[12] Techopedia, “Cybersquatting” available at

https://www.techopedia.com/definition/2393/cybersquatting accessed 9th September 2019.

Other variants of cyber-squatting are: Buying domain names of common words to resell, buying misspellings of popular websites, buying expired domains to sell back to the original owner, and buying domain names to create misleading websites. These sites may collect personal data or spread viruses.

[13] Section 58 Cybercrimes Act, Supra.

[14] WIPO Case No D2014-2015.

[15] WIPO Mediation and Arbitration center Case No. D2000-0710.

[16] WIPO domain Name Decision- D2000-0710, available at: https://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-0710.html accessed 23rd October 2019.

[17]  Toba Obaniyi, “Nigeria Air Domain Registration Saga. Who Wins?” available at:

  https://blog.whogohost.com/nigeria-air-domain-name-saga/ accessed 23rd September 2019.

[18]   News Rescue, https://newsrescue.com/man-got-linda-ikeji-suspended-admits-director-  

     cybersquatter-owner-lindaikeji-net/#ixzz3oH9OwNRu accessed 23rd September 2019.

[19]   Nigerian law Today, “Squashing the squatter in Cyberspace” available at

http://nigerianlawtoday.com/squashing-the-squatter-on-cyberspace/

accessed 23rd September 2019

[20]   Section 25 (2) (a) (b) Cybercrimes Act, supra.

[21]   Section 25(3) Cybercrimes Act, supra.

[22]  See the US Computer Fraud and Abuse Act 1986 (18 U.S.C s.1030(g)). In the United States, the aggrieved party is entitled to institute an action seeking for the cancellation or transfer of the domain name, in addition to asking for damages and an injunctive relief.

[23]  Trademarks Act cap T13 laws of the Federation of Nigeria 2004

[24]  See section 5 (2) TMA, supra.

[25]  Section 58 Cybercrimes Act, supra.

[26]  See British Telecomms Plc & Ors. v. One Million Ltd (1999) 1 WLR 903, Panavision International LP

  1. Toeppen 141 F3d 1316.

[27]  In the alternative, a domain name legislation, similar to the Trade Marks Act, may also be enacted

to provide for a proper system regulating domain name registration and usage in Nigeria.

 

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