THE DOMAIN NAME STRUGGLE: THE SWINGING OSCILLATING BALLS (1)

The domain name is the equivalent of your real life business address. It is where you can be found on the cybersphere. The increasing rate of internet penetration in the country has resulted in more domain name registration. The Domain Name System (DNS) is conceived as a user-friendly address, serving as the nerve centre facilitating users’ capability to surf the Internet. With the transition from orthodox market to e-commerce; brick and mortar office space to virtual one; and bureaucracy to e-government, DNS has assumed a more significant role of brand name, marketing tool, and even as a property.

DNS utilises the aid of the domain name and its analogous Internet Protocol (IP) number. A domain name is the easy to identify such as www.yourname.org and an IP number is the unique underlying numeric address, such as 123.45.678.90. The DNS functions on the basis of a hierarchy of names. The top-level domains (TLDs) comprise of generic top-level domains (gTLDs) (com, .net and .org) and country-code top-level domains (ccTLDs) (.ng, .gh., .cn). The DNS is governed by “first come, first served” doctrine. Domain names are registered by users to have the privilege of using their registered unique name.

Increasingly Domain names are registered intended to, extort and mislead; unscrupulous elements, register domain names ahead of a prospective owner of a mark in a bid to sell it in the future or use it for a confusingly similar objective. Domain names are registered with the names of popular political or social personalities or even in the name of popular brands to attract traffic for a purpose not endorsed by the real owner.

DOMAIN NAME ISSUES

Cybersquatting

Section 58 of the Cybercrimes (Prohibition and Prevention) Act, 2015 defines "cybersquatting" 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 a domain name is:

(i) 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 case of a personal name; and

(iii) Acquired without right or with intellectual property interests in it."

The U.S. Anticybersquatting Consumer Protection Act defines it as “registering, trafficking in, or using the internet domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else”. Section 25(1) of the Cybercrimes (Prohibition and Prevention) Act, 2015 defines a cybersquatter as “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…” Furthermore,

Cybersquatting like the traditional idea of squatting can manifest in different ways in the internet context. A trademark or potential business name can be registered as a domain name with the intent to sell to the owner of the trademark or their competitors. Cybersquatting violates the right of the trademark owner to legitimately utilise its own mark as a domain name. Rival companies can indulge in unfair competition thereby creating a corridor for cybersquatters to blackmail and harass trademark owners into buying back what is rightfully their own.

An example is the case of Wayne Rooney, the English footballer. A Welsh Actor Huw Marshall, an ardent fan of Everton Football club of England. In 2002, Huw registered WayneRooney.com and WayneRooney.co.uk with a long-term view of setting up a non-commercial fan page. At that time Wayne Rooney has not been registered as a trademark and the English star was just a 16 years old boy in the football club.

Cybersquatting can also manifest in the form of registering expired domain names, in a bid to sell it back to the previous owner or a prospective new buyer. Though most domain name registrars allow a window of time for the owner an expired domain name to renew it, registering such name after expiration for another purpose might not seem illicit.

However, not every case of registering a domain name similar to another trademark will amount to cybersquatting. A user might register a domain name legitimately while not aware of the existence of a trademark. The line between the lawfulness and illegality of cybersquatting is problematic to draw. It is a slippery eel fish; the phenomenon combines both legitimate and illicit activities. The trademark owner still has to establish that the person who registered the domain name “has no rights or legitimate interests in respect of the domain name, and registered and uses the domain name in bad faith.” Cybersquatting leaves the corridor open for possible identity theft, domain parking, hit stealing and internet scam.

Typosquatting

The name of a popular domain name is misspelt in an astonishingly confusing way, such that an innocent visitor can be misled to think he is visiting the real website. Typosquatting is a form of internet baiting and it can take the form of omission of the dot in a domain name such as wwwyourname.com or it can be a misspelling of the site such as www.gooogle.com, www.amozon.co.uk. It can also be a differently phrased name such as www.yournames.com. A popular example is between Microsoft Corp. and a Canadian High school student, Mike Rowe, who registered www.MikeRoweSoft.com. Microsoft initiated an action to have the name cancelled as misleading. A good number of celebrities have been victims of typosquatting. A settlement was eventually reached between the parties for the name to be dropped and Mike also got an X-box.

Cybergriping

It is a type of website devoted to the critique and or mockery of a person, place, corporation or an institution. A cybergripper can create a website with a similar name for the purpose of mockery. This is done for purpose of dilution. A popular case is the United States case of Jews for Jesus v. Brodsky 993 F.Supp. 282 (1998) the plaintiff, an NGO operates a website at www.jews-for-jesus.org, the defendant, a critic of the plaintiff’s organisation operated another website www.jewsforjesus.org whose objective is to criticise the plaintiff and expose visitors to views cardinally opposed to that of the plaintiff. The case was decided against the defendant for been opposed to unfair competition law.

Cyberpiracy

The Black’s law dictionary 8th edition defines it as the “act of registering a well-known name or mark (or one that is confusingly similar) as a website’s domain name, usually for the purpose of deriving revenue.” A website might put out a genetic copy of the official web page of a company. An example could be www.allibaba.com and clone the Alibaba’s official website to sell goods. Cyberpiracy is also referred to as website-cloning and this is when another website is created with exact content of another in a bid to mislead users. The National Youth Service Corp (NYSC) website has been cloned in the past to mislead prospective applicants to pay on another web page. The owner of a website that is a victim of cyberpiracy often issues a disclaimer on their real website. A recent example is the website of a popular newspaper, The Vanguard that was cloned and the press outfit had to disown the replica outlet. Cyberpiracy is analogous to the piracy of creative work.

The other part of this article will address the mechanisms put in place to resolve a dispute arising from the use of DNS.

Oloyede Ridwan is a Lagos-based legal practitioner. He is a big tech and art enthusiast. He can be reached on Linkedin