IP – How to protect your domain name in Nigeria (2)

Registration of a domain name

The
technical management of the domain name system is handled by ICANN. However,
the registration of the TLDs are managed by ICANN accredited Internet registrars.
A company can also confirm the availability of a domain name by searching a
registrar’s site or by using a ‘WHOIS’ search. WHOIS is an internet database
that contains information on domain names, the domain registrars, registrants
and the domain’s Administrative and Technical contacts. By performing a WHOIS
search, one can also confirm who registered a domain name and its expiration
date.

For
registrations of a domain name in the ccTLDs, a company will need to contact
the registration authority designated for each ccTLD. WIPO has set up a ccTLD
database that provides useful guidance on how to register a cTLD. WIPO has
established a Trademark Database Portal
(http://ecommerce.wipo.int/databases/trademark/index.html) to assist in the
domain name search.

Domain Name Conflicts

The
UDRP (<https://www.icann.org/udrp/udrp-policy24oct99.htm>)
sets out the legal 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.
The complaint may be submitted to any accredited dispute resolution service
provider accredited by ICANN.

All ICANN
accredited registrars that are authorized to register names in
the gTLDs and the ccTLDs that have adopted the Policy have agreed to
abide by and implement the UDRP Rules for those domains. 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.

Resolution of disputes and the
UDRP

Paragraph
4(a) of the UDRP provides that it is mandatory for a registrant
to submit to administrative proceedings in the event that a third party brings
a complaint before any of the approved dispute resolution provider concerning
an alleged abusive registration of a domain name under the following
circumstances:

a.
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; and

b.
the
domain name registrant has no rights or
legitimate interests in respect of the domain name in question; and

c.
the
domain name has been registered and is
being used in bad faith.

Consequently, where a domain name offends the
provisions of the UDRP Policy, such a domain name registration must be
cancelled and the name transferred in favour of the person who possesses the
registered trademark.

ICANN approved providers

Paragraph
3 (a) of the UDRP Rules states that any person or entity may initiate an
administrative proceeding by submitting a complaint to any provider approved by ICANN.

The
implication of this provision is that the Complainant can institute
administrative proceedings before any of ICANN’s approved providers. The
approved providers as listed on the ICANN website are:

a) Asian
Domain Name Dispute Resolution Centre

b) The
National Arbitration Forum

c) World
Intellectual Property Organization

d) The
Czech Arbitration Court

Procedure for commencing
transfer of a domain name

The
procedure for commencing the transfer of the domain name is as follows:

– The
filing of a Complaint with an ICANN-accredited dispute resolution service
provider chosen by the Complainant

– The
filing of a Response by the person or entity against whom the Complaint was
made

– The
appointment by the chosen dispute resolution service provider of an
Administrative Panel of one or three persons who will decide the dispute

– The
issuance of the Administrative Panel’s decision and the notification of all
relevant parties; and

– The
implementation of the Administrative Panel’s decision by the registrar(s)
concerned where there is a decision that the domain name(s) in question be
cancelled or transferred.

Conclusion

The
importance of domain names cannot be emphasized enough in this era of
e-commerce. A protected domain name is indispensable for prominence, and
profitability of a business like an internationally protected trademark or
service mark. It is therefore necessary to protect ones domain name as a
trademark and under the ICANN and WIPO procedure.

Some
points to note on this include the following:

·
Registered
trademarks/service marks protect a brand name while a registered domain name
protects against any unauthorized use of the domain name;

·
Trademark
supports the value of a business while a domain name draws traffic to the
business from any part of the world where there is access to the internet and
the World Wide Web.

You
may contact me at doturu@aelex.com for more information on
intellectual property, franchising and brand protection.