Cybersquatting –How To Protect Your Domain Name/Website From Cybersquatters In Nigeria

Domain Name

A domain name is a unique name that an
individual or organization chooses in order to identify his/its website. Every
website has its own domain name which comprises of a registered Internet
Protocol (IP) address. Example of domain names for some popular websites
include “facebook.com” and “mondaq.com”.

A domain name is required to have a word
(Second-Level Name) and a suffix (Top Level Domain Name). For example, with the
domain name mondaq.com, “mondaq” is the Second-Level Name and the
suffix, “.com”, is the Top Level Domain (TLD).

The Internet Corporation for Assigned Names
and Numbers (ICANN) recognizes the following Top Level Domains:

· infrastructure
top-level domain (ARPA)

· generic
top-level domains (gTLD)

· restricted
generic top-level domains (grTLD)

· sponsored
top-level domains (sTLD)

· country
code top-level domains (ccTLD)

· test
top-level domains (tTLD)

However, TLDs are generally categorised as
generic Top Level Domains (gTLDs) and Country-Code Top Level Domain (ccTLDs).
Thus a person may choose to register his domain name in any number of existing
TLDs.

What is cybersquatting?

There are a number of definitions of the
term, cybersquatting. The term is derived from “squatting” which is the act of
occupying an abandoned or unoccupied space or building that the squatter does
not own, rent, or otherwise have permission to use.

One author defines cybersquatting as “when a
person other than the owner of a well-known trademark registers
that trademark as an Internet domain name and then attempts to profit from it
either by ransoming the domain name back to the trademark owner or by using the
domain name to divert business from the trademark owner to the owner of the
domain name”[1].

ICANN defines it as “generally bad faith
registration of another’s trademark in a domain name[2],”The Nigerian Cybercrimes (Prohibition, Prevention, Etc)
Act 2015 (Cybercrimes Act) also defines it as a crime committed where a person
intentionally makes use of a name, business name, trademark, domain name
or other word or phrase registered, owned or in use by any person 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”.[3]

In summary, cybersquatting can be said to
refer to illegal domain name use or registration. It can have different
variations and can arise where in bad faith, a person steals a domain name in
order to profit from the goodwill of someone else’s trademark or company name
which could lead to an increase in patronage and website visits by unsuspecting
consumers. It can also arise where a person registers the domain name that
he has no affiliation with so that he can eventually sell it to the rightful
owner of the trademark.

Another variation of cybersquatting is
“typosquatting” which is also called Uniform Resource
Locator (URL) hijacking. This is a form of brandjacking which
relies on typographical errors made by Internet users when inputting
a website address into a web browser.
Thus in a situation where a user accidentally enters an incorrect URL or
website address, they may be led to the cyber squatters website. The registered
domain will have advertisements of services similar to the original one so that
the user who made a typing mistake will click on these links, generating
revenue for the bogus domain name.

Examples of some cases involving
typosquatting include the following:

1) Google v
Goggle

In 2011, Google filed a complaint with
National Arbitration forum and successfully got “Goggle.com”, “Goggle.net”, and “Goggle.org”,
which were considered phishing/fraud sites, taken down. [4]

2) YouTube v.
YouTube.Ph and Youube

Google also filed complaints with the World
Intellectual Property (WIPO) over the use of the domain names “YouTube.ph” and
“youube .com”. While the former was a domain name that led to another website,
VideoRewardCentral.com[5], the latter was a proxy site loaded with advertisement
link[6]

3) Air France
and British Airways

International airlines such as Air France and
British Airways have also been victims of cybersquatting. www.airfrance.com has
been typosquatted by www.arifrance.com, which diverted users to a website
peddling discount travel. Similarly, www.britishairways.com has been
typosquatted by www.british-air-ways.com[7].

Remedies

A victim of cybersquatting in Nigeria has
three options which are as follows:

Institute an action under the provisions of the
Cybercrimes Act 2015;

use an international arbitration system
created by ICANN; or

institute proceedings at the Nigeria Internet
Registration Association

These remedies are considered below.

INSTITUTE AN ACTION UNDER THE
PROVISIONS OF THE CYBERCRIMES ACT 2015

It is interesting to note that the
Cybercrimes Act criminalises cybersquatting which means that it is an offence
punishable under the law. Section 25 of the Cybercrimes Act provides that a
person who commits the crime of cybersquatting is liable to be punished with
imprisonment of a maximum term of two years or a fine of not more than N5,000,000 (five million Naira) or to both the
fine and imprisonment.

It is also noteworthy that the owner of the
domain name that is being subjected to cybersquatting does not need to prove
that he owns a trademark that is related to the domain name. What he would be
required to do would be to show that he has a registered name, domain name or
business name. Where the complainant is successful in court, an order can be
made directing the cybersquatter to relinquish such registered name, mark,
trademark, domain name, or other word or phrase to the complainant who would be
deemed to be the rightful owner of the domain name.

USE AN INTERNATIONAL ARBITRATION
SYSTEM CREATED BY ICANN

In order to address all disputes which may
arise regarding the ownership of a domain name, ICANN in conjunction with WIPO
developed the Uniform Dispute Resolution Policy (“UDRP”) and
the UDRP Rules.

Through the UDRP, ICANN and WIPO have
provided a mechanism for rapid, cheap and reasonable resolution of domain name
conflicts by avoiding the traditional court system for disputes and allowing
cases to be brought to a set of bodies that determine domain name disputes.The
UDRP (https://www.icann.org/udrp/udrp-policy24oct99.htm) sets out
the framework for the resolution of disputes between a domain name registrant
and a third party (i.e., a party other than the registrar) over the abusive
registration and use of an Internet domain name. The essence of the UDRP is to
enable anyone in the world file a domain name complaint concerning a gTLD or
ccTLD using the UDRP Administrative Procedure. Thus any owner of a domain name
that believes that someone is cybersquatting can file a complaint before any
ICANN accredited dispute resolution service provider.

This is made possible due to the fact
that ICANN accredited registrars that are authorised to
register names in the gTLDs and the ccTLDs that have adopted the Policy and agreed to abide
by and implement the UDRP Rules for those domains. Furthermore, any person or
entity wishing to register a domain name in the gTLDs in question is required
to consent to the terms and conditions of the UDRP. According to the ICANN
policy, a domain registrant must agree to be bound by the UDRP — they cannot
get a domain name without agreeing to this. To effect this, a Dispute
Resolution Policy clause is usually inserted in the domain name registration
agreement stating that if the registration of the domain name is challenged by
a third party, the registrant shall be subject to the provisions specified in
the UDRP.

Paragraph 4(a) of the UDRP Rules provides
that a complainant must be able to establish the following:

the domain name registered by the domain name registrant is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
the domain name registrant has no rights or legitimate interests in respect of the domain name in question; and
the domain name has been registered and is being used in bad faith.

The effect of the foregoing is that only the
owner of an already existing trademark or service mark can bring an action
under the UDRP. Consequently, where a domain name offends the provisions of the
UDRP Policy, there will be no financial remedy/award but the offending domain
name would be cancelled and/or transferred in favour of the person who
possesses the registered trademark.

Where the cybersquatter refuses to attend the
UDRP proceedings, the ICANN arbitration forum will hear the complaint in his
absence and examine the proof presented by the complainant. If it is deemed
satisfactory, a decision can be entered in favour of the complainant.

PROCEEDINGS AT NiRA

The Nigeria Internet Registration
Association (NiRA) is the Nigerian registry for .ng Internet Domain Names
and it maintains the database of names registered in the .ng ccTLD. If a
domain name owner’s website is a ccTLD and ends with ‘.ng’, he may choose to
institute his action at the NiRA which has its own set of rules and policies
known as the NIRA Dispute Resolution Policy (NDRP).

The NDRP (https://www.nira.org.ng/images/Policies/NIRA DISPUTE RESOLUTION
POLICY.pdf) is similar to the UDRP and sets out the framework for
the resolution of ccTLD domain name disputes. Paragraph 4a of the NDRP Rules is
identical to paragraph 4b of the UDRP Rules and it sets out the conditions
that the complainant must satisfy before he can have a decision in his favour.
Where the complainant is successful, he can have the cybersquatter’s domain
name transferred to him and/or cancelled by the NDRP.

Conclusion

Cybersquatting remains a threat to legitimate
business owners in the evolving digital age. Statistics show that WIPO handled
a record-high of 3,074 cybersquatting disputes in 2017 under the UDRP with
three industries (banking and finance, fashion, and internet and IT) accounting
for nearly one-third of all disputes. [8]

With cybersquatting now regarded as a crime
in Nigeria, it is possible that would-be cybersquatters may be discouraged from
participating in this nefarious activity. However, with there being no record
of any arrest and prosecution, only time will tell if the law will be effective
or if it may be better for a complainant to rely on the UDRP procedure which
has proven to be effective in several jurisdictions.

For extensive information on cybersquatting,
domain names, and intellectual property rights, you may contact the author of
this article at doturu@aelex.com.

[1] Cornell Law School “Legal Information Institute”
Cybersquatting

[2]ICANN, “About Cybersquatting” <https://www.icann.org/resources/pages/cybersquatting-2013-05-03-en>

[3] Section 25(1) of the Cybercrimes Act

[4] Domain Name Wire “Google wants to take down Goggle”

[5]Domain Name Wire “Scammy Surveys Will Bring Renewed Attention
to Cybersquatting”

[6]The Economic Times, “Your spelling errors can help
typosquatters make big bucks” <//economictimes.indiatimes.com/articleshow/5884936.cms?utm_source=contentofinterest&utm_medium=text&utm_campaign=cppst>

[7] Findlaw, “Protecting Your Intellectual Property from
Domain Name Typosquatters”

[8]World Intellectual Property Organization WIPO
Cybersquatting Cases Reach New Record in 2017
http://www.wipo.int/pressroom/en/articles/2018/article_0001.html