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Editorials

THE DOMAIN NAME STRUGGLE: THE SWINGING OSCILLATING BALLS (2)

The first part of this article lay in perspective how dispute involving Domain Name System manifests. You can read it here The second part of the article seeks to present dispute resolving mechanism and the legal framework.

RESOLVING DOMAIN NAME DISPUTE

ICANN POLICY

The USA Department of Commerce (DOC) created Internet Corporation for Assigned Names and Numbers (ICANN) a non-profit corporation to coordinate DNS functions and evaluate the effects of adding new gTLDs and related dispute resolution procedures on trademarks. ICANN utilises the Uniform Domain Name Dispute Resolution Policy (UDRP) for resolving domain name disputes involving gTLDs. The UDRP proceedings are conducted by the ICANN approved service providers. The World Intellectual Property Organisation (WIPO) (an agency of the United Nations is one of such accredited service providers), implements the UDRP to resolving trademark/domain name disputes such as cyberpiracy, cybersquatting.

The UDRP involves submitting a complaint to one of the ICANN’s accredited service providers like WIPO. The respondent to the complaint then files a response. An administrative panel is constituted to review and investigate the complaint. The panel concludes its findings and arrive at a decision and inform the parties. The last stage is the implementation of the decision by the Registrar in case the panel decides the domain name be cancelled or returned. The procedure takes approximately 60 days.

The UDRP allows a domain name to be transferred from one person to another when bad faith registration exists. When a domain name is purchased, the UDRP forms part of the contract. As part of the purchase agreement, a consumer agrees to be bound by the UDRP. It is impossible to own a gTLD domain name without agreeing to the UDRP. The UDRP is a private arbitration mechanism for resolving trademark impasse where parties are subjected to the rules as everyone else in the world. If a complainant wins, the name is transferred from the infringer; if the complainant loses, things remain as it is.

To succeed in these proceedings the Complainant must make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:

(i)             the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and

(ii)           the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and

(iii)          the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).

In 2016, WIPO resolved 3,036 domain name dispute, the highest since it started the UDRP in 1999. In 2015, WIPO Arbitration and Mediation Centre resolved and returned over 1000 domain names to eBay registered in bad faith. A similar decision was reached in favour of Hugo Boss in 2016. In 2016, a complaint was submitted by an American to WIPO Arbitration and Mediation Centre, that DomainKing a popular Indian domain name registrar with a presence in Nigeria, South-Africa, and India is infringing on its trademark with the same name. The American company is a domain name registrar who filed its trademark in 2001 and has been carrying on business with the name domainking. The American filed complaint with WIPO that it has been unable to register the domainking.ng because it has been registered by the Indian company. The panel resolved the dispute in favour of the respondent that the complaint be denied the use of the domain name.

NiRA POLICY

Nigeria Internet Registration Association is a creation of Nigeria Information Technology Development Agency (NITDA). NiRA was created to license registrars and regulate DNS in relation to .ng ccTLD.

NiRA has its own dispute resolution policy called NiRA Dispute Resolution Policy (NDRP) similar to ICANN’s UDRP set out in its Complaint Policy. NiRA is empowered to handle “complaints made about domain names, registrars, and registrants in the .ng namespace”. NIRA handles two types of complaints relating to about .ng domain names and registrants and complaints about .ng domain name services provided by NIRA accredited registrars and their resellers. They are designated as “domain complaints” and “industry complaints”.

Complaints are submitted online through the NiRA’s website using the NiRA Dispute Resolution Form. NiRA will endeavour to resolve complainant’s complaint within thirty (30) days, but if complainant’s complaint is complex it may take several weeks to resolve. If this is the case, NIRA will keep complainants informed of the progress of complainant’s complaint on a weekly basis. NIRA will request a response from the registrant or registrar involved. NiRA will investigate the complaints afterwards. Server lock might be placed on the site under review to preserve status quo, this is similar to the URS procedure of ICANN. NiRA will notify the complainant in writing after concluding its investigation and make a direction on the next course of action.

If the complaint is upheld, NIRA may take one or more of the following actions:

a. instruct the registrar of record to “policy delete” the domain name(s) in question;

b. instruct the registrar of record to correct the registrant details of the domain name(s) in question; or

c. in the case of an unauthorised transfer, instruct the registry to reverse the transfer

The NIRA Dispute Resolution Policy also provides for independent arbitration of disputes between a registrant and another party with competing rights in the domain name. Proceedings must be lodged with one of the approved Providers listed on NIRA’s website. Resolution of the dispute must be evidenced by a Deed of Settlement or an order of a competent arbitrator, tribunal, court or legislative body. An unsatisfied party has a right to file an appeal at NiRA.

NiRA was involved in resolving a domain name dispute involving the telecommunication giant MTN in 2008. It has been using its dispute resolution policy to resolve domain name disputes.

THE NIGERIA CYBERCRIMES (PROHIBITION AND PREVENTION) ACT, 2015

The provision of Section 25 of the Act provides for the offence and penalty for cybersquatting. The punishment for cybersquatting upon conviction is imprisonment for a term not less than two years or a fine of not less than N5million or to both fine and imprisonment. In addition to the punishment, the domain name will be relinquished and returned to the lawful owner.

The offence is such of great economic consequence that some countries have laws specifically for it, while some countries include it in the general body of their cybercrimes law. The laws basically seek to protection for owners of right and distinctive mark from being blackmailed.

The provision of the Cybercrimes Act on cybersquatting makes it a criminal act. The Act did not provide for the agency that will be responsible for the prosecution of the offence. However, the Police seem the appropriate agency to make a report to who will then prosecute it in court. Section 50(1) of the Cybercrimes Act grants the Federal High Court jurisdiction over crimes committed under the Act.

URS POLICY

The Uniform Rapid Response System came into effect in 2013. It was conceived to complement the existing UDRP framework. URS is a mechanism to “provide rapid relief to trademark holders for the most clear-cut cases of infringement and offer cheaper, faster responses than the existing Uniform Domain Name Dispute Resolution Policy (UDRP)”

The URS procedure allows a trademark owner to seek suspension of a domain name in a new generic top-level domain (gTLD). The URS policy allows a trademark owner to file a complaint and if successful, get a domain name temporarily suspended. It has its own unique procedure and rules. The URS has not garnered adequate traction. However, unlike UDRP where a trademark owner can get a domain name transferred, under URS, the domain name is temporarily suspended.

The test for determining a complaint under URS is exactly the same as UDRP. The URS is only available for new gTLDs.

OTHER RELIEFS

A victim at the discovery of such violation can issue a disclaimer on its official website disowning the squatted or cloned website. The victim can as well seek the help of a legal practitioner to write a cease and desist letter. The use of the initial mechanism saves a victim the cost of filing under NiRA and UDRP. However, when the above approaches fail, ICANN or NiRA dispute resolution policy can be resorted to. The ICANN and NiRA procedure is cheap, fast and easy.

Passing off action in tort might be inadequate in the internet context; the action is available for damage done to goodwill and reputation of a brand. It is a remedy available for any mark or name intended to mislead prospective members of the public. However, the existing framework of passing off is inadequate for every manifestation of DNS issues.

An action for infringement of trademark would have been scalable as a civil action, but considering that to be entitled to relief under the Trademarks Act, a trademark has to be registered as provided in Section 3 of the Trademarks Act. The system of registering a trademark and domain name differs. An action under the Nigerian Trademarks Act is likely not possible. In other jurisdictions, the trademark law has been judicially expanded to interpret domain name disputes.

CONCLUSION

The rights of a trademark holder in one territory must coexist with the legitimate rights of other trademark holders or Internet users in different jurisdictions and for different uses. Using a domain name illicitly and with dishonesty is a violation of, Intellectual property, trade and economic rights and the legitimate owner suffers dire financial and reputational loss.

The existing legal framework in Nigeria is still largely evolving and behind the ever growing tech trend. The provision of the Cybercrimes Act and NiRA complaint policy are inadequate where the complainant has suffered substantive economic loss from cybersquatting or cyberpiracy. A more specific law or expansion of existing trademarks law that would provide for a recourse to a civil action to claim monetary damages will be needed to protect the interest of commerce. Furthermore, a conviction under Cybercrimes Act or the return or cancellation under NiRA should not deny a legitimate complainant access to court. An expanded trademarks law and enactment of an Antitrust and unfair competition law will further give complainant options to claim monetary damages.

There is a need for integration and coordination between the Trademarks Registry and NiRA to avoid a clash between trademarks and domain names genuinely registered. It has to be coordinated in a way that the two bodies can interface constructively to avert dispute or possible clash of interest between a user that has legitimately registered a domain name without prior knowledge of the existence of a trademark and an owner of a trademark seeking to register the mark as a domain name.

The registration of a domain name must be fused with the existing trademark or service mark registration. In Brazil, “registration will be granted to the entity that proves its legitimate interest in prior trademark or trade name rights.” WIPO has suggested that the registration of a domain name identical to a well-known trademark in any new gTLDs should be automatically blocked.

There has been a question about the independence of ICANN been a creation of the U.S. government and the influence the government holds on it. The developing and non-western countries have at the World Summit on Information Society – U.N. sponsored (WSIS) meetings raised the criticism. To strengthen trust building in the system and promote transparency, ICANN can be re-organized as a commission under WIPO or share responsibility with the International Telecommunication Consortium (an inter-governmental agency of U.N.), which will be in charge of administering the DNS according to an international agreement.

PS: Views expressed in this article is the opinion of the writer and in no way the view of safarahub or a legal advice. If you require legal advice, you should contact your solicitor.

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

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4 comments
  1. education

    I do not even know how I ended up here, but I thought this post was great. I do not know who you are but definitely you are going to a famous blogger if you are not already 😉 Cheers!

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