HEY CYBERSQUATTER, THAT’S THE NAME OF MY FAVOURITE ARTISTE!

Have you ever tried googling the name of your favourite artiste, after getting about a thousand hits on google, you click on a domain name similar to the name you googled. Wham, you enter the website only to discover that it has nothing to do with the “googled” name. In the website is a picture of a cat and information to the effect that the website (together with its domain name) is up for sale. You begin to wonder the nature of the commercial interest in selling and or buying a domain name bearing the name of a celebrated artiste.

Welcome to the world of cybersquatting. Cybersquatting is the bad name registration of trademarked names (and in some cases names in which a common law trademark right exist) as domain names (a domain name is the alphanumeric address of a website on the internet such as 9ja artiste name.com) by third party cybersquatters who do not possess rights in such names. Not only is cyberquatting limited to trademarked marked names but also to names belonging to celebrities and popular artistes. The intention of cybersquatters is usually to sell the domain names back to the owners (mostly at an exorbitant price). This practise of cybersquatting has increased the tension between the owners of trademarked names and the domain name registrants who register these names, it has also presented our traditional judicial process with myriads of problems since the courts in most cases are territorially based while the internet where the domain names are registered is global in nature.

Now consider this “cyberthetical” scenario, a cybersquatter located in the US registers as a domain name www.Tu-Face.com (the name of a popular recording artiste in Nigeria) with a domain registrar (not to be confused with domain name registrant, domain name registrars are business entities which accept and process domain name registrations) in Israel. The question then becomes how can Tu-Face legally proceed against the cybersquatter.

The obvious answer to this question would be in a court of law, but the nature of the issue presents serious jurisdictional challenges for the Nigerian courts, further more and taking into consideration the expensive and slow pace of litigating and the problems associated with enforcing the court decision, one begins to wonder if the cybersquatter will ultimately win having “played a fast one” and hence will “reap from where he did not sow”.
Enter the Internet Corporation for Assigned Names and Numbers (ICANN, a body established to coordinate the Domain Name System), in August 24th, 1999, ICANN adopted the Uniform Domain Name Dispute Resolution Policy (UDRP) applicable in most generic top-level domains (gTLDs). This policy enables trademark owners to resolve the bad faith registrations of their trademarks without recourse to the national courts.

To succeed on a claim against the cyberquatter under the UDRP procedure, the aggrieved party must establish pursuant to paragraph 4(a):

i. That the domain name is identical or confusingly similar to a trademark (or service mark) in which he has rights

ii. That the cybersquatter has no right or legitimate interest in respect of the domain name

iii. That the domain name has been registered and is being used in bad faith by the cybersquatter
Paragraph 4(b) UDRP provides a non-exhaustive illustration of evidence of bad faith registrations while paragraph 4(c) of the UDRP identifies non-exhaustive circumstances which would demonstrate rights or legitimates in the domain name for the purpose set forth under 4(a)(ii).

Pursuant to paragraph 4(i), the remedies available to a complainant shall be limited to the cancellation of the domain name or the transfer of the domain name to the aggrieved party.

In March 2000, Oscar Award winning American Actress Julia Roberts commenced UDRP proceedings against Boyd a cybersquattter who had registered the domain www.juliaroberts.com and had subsequently offered it for sale on eBay. The UDRP panel ordered that the domain name be returned back to her since Julia Roberts had a common law trademark right in her (dare I say celebrated) name and further, that Boyd had no legitimate rights or interest in the name and had registered and used the name in bad faith.

A key advantage of the UDRP procedure is the mandatory implementation of the decisions as domain name registrars are mandated to take the necessary steps to enforce any UDRP decisions, subject to the losing party’s right to file court proceedings and suspend the implementation of the decision under paragraph 4(k) of the UDRP.

It is obvious here that the UDRP has come to complement our legal system, the UDRP quickly resolves domain name disputes as an alternative to litigating the “old fashioned” way. As at the time of blogging these are the names of approved providers for UDRP: Asian Domain Name Dispute Resolution centre (ADNDRC), National Arbitration Forum (NAF) and World Intellectual Property Organization (WIPO).
My best advice for cybersquatters is that “the long arm of UDRP will definitely catch up with you”.


PS: Do you know that Reverse Domain Hijacking (also known as reverse cybersquatting), occurs where a trademark owner attempts to secure a domain name by making false cybersquatting claims against a domain name’s rightful owner.[1] This often intimidates domain name owners into transferring ownership of their domain names to trademark owners to avoid legal action, particularly when the domain names belong to smaller organizations or individuals.