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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.
2.
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.
3.
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.
4.
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.
5.
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:
a.
acquired
the domain name in bad faith,
b.
with
the intent to make profit, mislead, destroy or prevent others from registering
the domain name,
c.
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,
d.
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.
6.
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:
(a)
the domain name was identical and confusingly similar to the
trademark of the complainant;
(b)
the respondent had no rights or legitimate interest in the domain
name, and
(c)
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.
2.
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]
7.
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]
a.
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.
b.
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]
8.
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:
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]
9.
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)
[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.
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