Domain Name Dispute Resolution and CyberSquatting
Bibitayo Ojo
The natural states of humans were described as ‘solitary, poor, nasty, brutish and short’ and government and rule of law was proposed to be an appropriate solution. However, with the turmoil in the cyber world today, it is clear beyond doubt that the challenges posed by human activities in the physical world are too pale to be compared to those on the internet. No wonder the internet was described as having the ‘characteristics of the Wild West where no one is to be trusted’ . The astronomical growth of the internet over the past decade allows internet users to have unlimited opportunity to create web pages, profiles on social media. Premised on such development, internet becomes a dangerous place where hackers cause damage to domain names, infringe on the propriety of patents and trademarks etc. Among those crimes committed on the internet is cybersquatting which can be adjudicated upon online through the Online Dispute Resolution mechanisms.
What is Cybersquatting?
Cybersquatting is described as a situation where a domain name is registered in bad faith to benefit from the goodwill of a trademark or a company. It involves the registration of a well-known brand on the internet such as domain name to sell the domain name to the rightful owner. Here, a domain name similar to that of a brand or trademark with goodwill is registered to prevent the brand or trademark owner from using the name in e-commerce because, by building a website with such related domain name, the brand owner would be unable to take over his brand name and repudiation. For instance, where a domain name is registered with ‘clubconnect.com’ when there is an existing domain name which is ‘clubkonnect.com’. The later would be at the mercy of the former. In that, an internet user may be confused as to which one is the right address to follow. Such diversion is not an accident, but rather to bring the internet to the competitor’s website to make a profit at the expense of the rightful owner’s goodwill. In the famous case of eBay v. Du Hongxia (WIPO Case No D2014-2015), eBay filed a domain name complaint at the WIPO Arbitration and Mediation Centre on November 17, 2014, against Du Hongxia/Liu Yujiao/WHOIS AGENT, Domain Whois Protection Service for the transfer of 1153 unauthorized domain names registered with the well-known and popular trademark ‘eBay’. To support its claim, eBay adduced evidence to show that the Respondent registered domain names with the names of other popular brands such as BMW, NIKE, and SONY. 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.
Cybersquatting can also be carried out by similar to a domain name of another company with a typographical error. This is referred to as typosquatting. For instance, where ‘clubconnect.com’ is registered against the original web address ‘clubkonnect.com’. The economic incentive behind this is that as internet users try to visit the original website, the internet may suggest the cybersquatter’s address and traffic will be directed to their website. This is as a result of the insertion of metatags similar to the original website into the text of the impostor’s website which creates search words on search engines like Google to lead internet users to their website. It is imperative to note that cybersquatting does not only affect e-commerce, but it also affects the personal profile of individuals on social media where the profile of businessmen, politicians and celebrities are used to defraud innocent internet users.
In 2009, Tony La Russa, filed a complaint against Twitter, accusing Twitter of cybersquatting. In this instant case, a Twitter profile was created bearing Tony La Russa’s name and his picture. The profile encouraged users to join and receive Tony La Updates. Unfortunately, those updates were ill-mannered and offensive. It was argued that the author of that profile acted in bad faith with the intention to cause injury to the person of Tony, divert traffic from his website and make a profit from the injury.
Settling Domain Name Dispute With ODR Mechanisms
If every dispute arises from infringement on domain names is to be resolved by litigation, the expression of people on the internet will be discouraged because of the high cost of litigation or the traditional Alternative Dispute Resolution (ADR) which is not apt for settling disputes arising from the cyber world. ODR has been able to fill this lacuna through the Internet. Corporation for Assigned Names and Numbers (ICANN) and Nigeria Internet Registration Association (NiRA). Before filing a complaint about the resolution of a dispute, it is important for the victim to contact the impostor and let him know that he’s infringing on your brand/trademark. This will show clearly if the impostor’s action was an accidental, coincidental or intentional. Irrespective of what had happened, the most appropriate thing is to write to him a desist letter. Instructing him to do away with the brand/trademark. Where he refused to do the needful within a reasonable time, you can now file a complaint against him. Before filing the complaint, it is instructive to identify the type of the website affecting to know the nature of proceeding to adopt. For every domain name, there is a suffix which helps to identify the type of website it is. For instance, the Top-Level Domains (TLDs) include the generic Top-Level Domains (gTLDs) websites with suffixes like ‘.edu’,’gov’ ‘.com’, ‘.net’, ‘.org’ etc. while country-code Top-Level Domains (ccTLDs) include ‘.ng’, ‘.uk’, ‘.za’ etc.
Settling Dispute Under ICANN
Where a website is gTLD, action can be brought under ICANN which uses Uniform Domain Name Dispute Resolution Policy (UDRP), an ODR mechanism for resolving disputes online. Under UDRP, the complainant files his complaint. Showing that:
i. The domain name being complained about is identical and confusing to his domain name or trademark;
ii. That the complainant had registered the domain name; c.
iii. That the impostor has no right or interest in the domain name;
iv. That the domain name was registered in bad faith. It is in light of this that a trademark or brand needs to be registered.
If all the above conditions are satisfied against the impostor, the remedy available is to cancel the domain name or be transferred to the rightful owner. It is worthy of note that monetary remedy is not available for this type of dispute.
Settlement of Dispute Under NiRA
For disputes arising from a website under ccTLD with suffixes like ‘.ng’, settlement can be achieved under the ODR mechanism called NiRA. NiRA is a dispute resolution policy adapted from UDRP which provides a platform upon which conflict arising from the registration of domain names with country code ‘.ng’ can be settled. The policy sets out the conditions for informal mediation of dispute between the person who obtains registration of a domain name in the registry managed by (NiRA) and another person who is acting in the capacity of the original registrant in respect of the same domain name.
Procedure For Filing Complaint Under NiRA
To institute an arbitral proceeding in a domain name dispute, the registrant of the domain name under the NiRA Dispute Resolution Policy (NDRP) shall be submitted in four copies of the complaint form (with nothing more than 2000 words) found on the NiRA website. The complaint is then reviewed and where the complaint has satisfied the administrative compliance, within three days, the complaint is sent to the respondent who is required to file his response within twenty (20) days from the date of the receipt of the complaint. Where the respondent fails to give his response to the complaint, the complaint would then be decided based on the information provided in the complaint
And where the respondent files his repose, the complainant is required to file his reply to the response within five days. It is after this that the informal mediation would commence. Within three days after the necessary complaint and response has been filed,
will begin informal mediation in a manner which is premised on its discretion and what it considers appropriate. Any settlement reached by parties must then be in writing or electronic form for enforcement. However, where the parties could not reach an agreement through informal mediation, NiRA shall within 10 days notify the parties of its intention to refer the dispute to the expert upon payment of the necessary fee prescribed under paragraph 22(a). Upon payment of the prescribed fee, the expert shall be appointed to form a panel and their name is sent to the parties. The Panel shall determine the dispute base on the statements and documents submitted and under the Policy and within 14 days of appointment, the decision of the panel shall be sent to NiRA. If after considering the dispute, it is discovered that the complainant is successful, the domain name registration is cancelled or transferred to the complainant.
But where it is discovered that the claim was brought in bad faith, for instance, in an attempt to hijack a domain name, the panel shall order the claimant to pay to NiRA in trust of the respondent a sum of Five Hundred Thousand Naira ( 500,000 NGN) to cover the cost incurred by the Respondent in preparing and filing processes in the cause of the proceeding. In Nigeria, there are lots of dispute arising from cybersquatting which may not be adequately resolved by the conventional court or the traditional ADR because of the nature of where the transaction took place (cyber world), and so, it is contended that a platform like NiRA and ICANN are the most appropriate means of settling dispute arising from domain name registration.
Now that you are aware of your right and procedure of accessing justice online, why not adopt this procedure. Also, it is important that you share this important information with other internet users and most especially, website developers.
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