Resolution of Domain Names Disputes in Nigeria
By: Seun Lari-Williams
In recent years, domain names have become valuable intellectual property assets. In the fourth quarter of 2021, it was reported that Nigeria had over 140 million active internet users,[1] with top-level domain registrations increasingly becoming important to trading. And as you may know, where there are IP assets, there are also IP disputes arising, in this case, from cases of cybersquatting, misuse of personal names, reverse domain hijacking. This article explores how this type of disputes are resolved in Nigeria.
Domain Name Disputes
Domain name disputes can arise from honest, and good-faith co-existence of similar domain names. However, in a lot of cases, they arise from deliberate, bad faith, and abusive registrations of domain names and infringement. An example of this is the practice of cybersquatting, a problem that has existed since mainstream use of the internet became commonplace.[2] This occurs where an existing trademark or the name of a popular character (real or fictional) is registered as a domain name by someone else. The intention of a cybersquatter may be to offer to sell the domain name directly to the trademark owner, put the domain name up for auction, or maintain the domain name andpass it off as relating to the trademark owner to attract internet users to their own site or business.[3] Another example of a domain name abuse is when a registered domain name is intentionally made to be confusingly similar to a mark; taking advantage of human lack of attention to details or hasty reading (for example, by replacing the letter ‘I’ in a trademark or name with the number ‘1’). This is called typosquatting, aka URL hijacking, domain mimicry, sting sites, or fake URLs.[4]
Regulatory and Legal Framework Governing Domain Name Disputes in Nigeria
ICANN
In Nigeria, as in other countries, regardless of the location of the disputing parties, the type of the top-level domain name in dispute determines the appropriate forum for dispute resolution. Therefore, disputes related to generic top-level domains such as .com, .net, and .org, are governed by procedures put in place by the Internet Corporation for Assigned Names and Numbers (ICANN), or the Uniform Domain Name Dispute Resolution Policy (UDRP). The procedure is administered by ICANN accredited dispute resolution service providers e.g., the WIPO Arbitration and Mediation Center (WIPO Center).
Under this policy, a complainant can file a complaint with a court or dispute-resolution provider for recovery of a domain name. For successful recovery, the complainant must prove that:
- The domain name is identical or confusingly similar to its trade mark;
- The registrant has no rights or legitimate interests in the domain name; and
- The domain name has been registered and is being used in bad faith.[5]
A case with Nigerian parties which illustrates the foregoing is the 2021 case brought by MTN Nigeria Communications PLC before the WIPO Center concerning the domain name <yellostargames.com> (registered with NameCheap, Inc, on March 13, 2020).[6]
In this case, MTN maintained that it organizes and promotes an online music platform called “Y’ello Star” at the domain name <yellostar.ng> which would direct to a website at “www.mtnonline.com/yellostar” to “search for, discover, nurture, expose and launch music talents in young Nigerians.” It also disclosed that it owns several Nigerian trademark registrations for logos that comprise “Y’ELLO STAR” or “YELLO STAR” and a five-point star, all of which were filed on May 24, 2019, and issued to registration on January 13, 2020.The Respondent (whose name is undisclosed and who MTN had had prior business dealings with) was a software and information technology company that designs and develops software solutions for its clients in Nigeria and elsewhere, gamifies the operations of its clients by introducing games and similar concepts to increase the patronage of its clients. Until this dispute arose, the website at the disputed domain name (yellowstargames.com) led to a site operated by the Respondent that promoted Y’ello Star Show Games. The WIPO Administrative Panel found that the website copied the look and feel of MTN’s website and even included the Complainant’s Y’ELLO STAR trademark. After receiving correspondence from MTN, the Respondent took this website offline, and it remained offline at the date of the decision. Nonetheless, the Panel found that the evidence before it was sufficient to establish the necessary elements of bad faith under the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) paragraph 4(b)(iv) and under the additional criterion of intentional trading off the Y’ELLO STAR and YELLO STAR trademarks.
It was interesting that the panel opined that the fact that the website to which the disputed domain name resolve was, at the time of the decision, inactive did not prevent a finding of bad faith under the doctrine of passive holding.[7] It held that the Respondent registered and had been using the disputed domain name in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
NIRA
Nigeria’s domain name system identifies Nigeria-related websites and is currently available for registration in variations including variations such as biz.ng, org.ng, gov.ng, edu.ng, etc. The Nigeria Internet Registration Association (NiRA) is the registry for .ng Internet Domain Names and maintains the database of names registered in Nigeria. The NIRA does not subscribe to the UDRP in relation to disputes involving .ng domain names; instead, it relies on domestic regulations. The NIRA governs through a constitution, a series of policies (e.g. dispute resolution policy) and contractual agreements with registrars and registrants.[8]
The NiRA Dispute Resolution Policy (NDRP) provides a forum for settling conflicting registrations of domain names on the .ng country code top level domain name registry managed by the NiRA.[9] NIRA explains its dispute resolution jurisdiction and procedure as follows:[10]
The Complainant in a domain name dispute situation can file a complaint addressed to the .ng Registry via email. The complaint can be filed on the following grounds:
- The domain name in question is identical or confusingly like a trademark/service mark in which the Complainant has rights; and
- Registrant/Respondent has no rights or legitimate interests in respect of the domain name; and
- The domain name in question has been registered or is being used in bad faith or for illegal/unlawful purposes.
On receipt of the complaint, the .ng Registry shall evaluate the same for compliance, and discrepancies (if any) will be notified to Complainant within 5 working days who will then be given 7 working days to make rectifications. Once the complaint has become compliant with the Rules, the .ng Registry will appoint an arbitrator within 5 working days. The arbitrator will then set a time limit for the Registrant/Respondent to file its submissions. Thereafter, the arbitrator would review the submissions made by both sides and then pass a decision on the merits of the case.
Domain Name Protection Under Nigerian Laws
The primary criminal law governing domain name disputes is Nigeria’s Cyber Crime Act. Section 25(1) of this Act provides that:
“Any person who, intentionally takes or makes use of a name, business name, trademark, domain name or other word or phrase registered, owned or in use by any individual, body corporate or belonging to either the Federal, State or Local Governments in Nigeria, 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, commits an offence under this Act and shall be Cybersquatting. liable on conviction to imprisonment for a term of not more than 2 years or a fine of not more than N5,000,000.00 or to both fine and imprisonment.
To bring an action under the Cybercrime Act, it would be necessary to file a complaint with the Police, who are charged with the task of implementing the Act. This option is further considered less attractive as the Act does not provide for financial remedy for the complainant. Note that to make such a complaint, you need not have a trademark. It is sufficient to show that the name in dispute had been registered as a business name. The Act empowers the court to make orders directing an offender to relinquish the registered name, mark, trademark, domain name, or other word or phrase to the rightful owner.
Other relevant laws include law of torts e.g., in passing off and defamation cases, while other authorities available to resolve domain name disputes might also include arbitration bodies, organisations that help with voluntary negotiations and settlements.
Challenges with Domain Name Dispute Resolution
Firstly, ICANN’s UDRP is essentially a private legal regime with a narrow scope. Also, it has an ill-defined relationship to Nigeria’s state-based legal institutions. In light of this limitation, in the U.S., a District Court Chief Judge in Illinois stated that his court was not bound by the proceedings of a UDRP panel, on the reason that the ICANN policy failed to address the issue of judicial deference entirely.[11] It is not clear whether a Nigerian court can assert coercive control over domain name registrars and registrants, or when they would enforce panel decisions.
Also, WIPO/ICANN have not made any stipulations as to issues of precedent, resulting in often inconsistent and unpredictable decision-making.[12] NIRA toes this line as well.
Furthermore, proceedings under the domain name dispute resolution policy are only mandatory in respect of respondent domain name holders. Therefore, complainant trademark owners have the option of initiating de novo litigation at any stage. Also, after a UDRP decision is rendered, a respondent still retains the right to fight an adverse ruling on appeal, in their own jurisdiction.
Lastly, remedies are limited to cancellation or transfer of a dispute domain name, barring relief by way of damages or injunction.
Some recommendations
What’s better than resolving a dispute? Well, avoiding one! Owners of domain names should defensively register domain names that include key trade marks and trade names or variations thereof. The cost for doing so compared to the potential cost of recovering an infringing domain name from a cybersquatter is usually negligible.
ICANN and WIPO would also do well to pursue mechanisms for national-level recognition and enforcement of their decisions so disputants can have meaningful formal redress.[13]
Finally, it would be good for Nigeria to keep up with international developments in this area in establishing a link between some unfair domain name registration activities and unfair competition.
[1] This Day Newspaper, ”Impact of Domain Name Adoption on Digital Economy”, June 2022: https://www.thisdaylive.com/index.php/2022/06/08/impact-of-domain-name-adoption-on-digital-economy/ accessed 17 December 2022
[2] Coran, Steven J. (2001) “The Anticybersquatting Consumer Protection Act’s In Rem Provision: Making American Trademark Law the Law of the Internet?,” Hofstra Law Review: Vol. 30: Iss. 1, Article 5. Available at: http://scholarlycommons.law.hofstra.edu/hlr/vol30/iss1/5
[3] Id
[4]See WIPO Arbitration and Mediation Center Panel decision in Société des Produits Nestlé S.A v. bomba k
Case No. D2021-2230. Available:
https://www.wipo.int/amc/en/domains/decisions/text/2021/d2021-2230.html accessed 16 December 2022
[5] Internet Corporation for Assigned Names and Numbers, ‘Uniform Domain Name Dispute Resolution Policy’ available: http://www.icann.org/en/udrp/udrp.htm Accessed 15 December 2022.
[6] WIPO Arbitration and Mediation Center, MTN Nigeria Communications PLC v. Withheld for Privacy Purposes, Case no. D2021-1655: Available:
https://www.wipo.int/amc/en/domains/decisions/text/2021/d2021-1655.html accessed 15 December 2022
[7] “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding.” See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”)
[8] United Nations Conference on Trade and Development, “Review of E-Commerce Legislation Harmonization In Ecowas”, February 2015: https://tft.unctad.org/wp-content/uploads/2019/07/ECOWAS-study-on-cyberlaws.pdf 22 December 2022
[9] For steps for filing a complaint, see the Simplification of the Nira Dispute Resolution Policy Document (NDRP): https://nira.org.ng/pdf/Simplification_of_NDRP_4thSeptember2018.pdf accessed 17 December 2022
[10] NIRA, “Domain Name Dispute, What to Do” https://nira.org.ng/domain-name-dispute-what-to-do/ accessed 20 December 2022
[11] David R. Parkatti, “Online Dispute Resolution: Overcoming the Problems and Shackles of Territory” 2001
[12] Gerald M. Levine, “The Emergence of Consensus in the UDRP”, CircleID, 27 December 2017: https://circleid.com/posts/20171227_the_emergence_of_consensus_in_the_udrp accessed 22 December 2022
[13] David R. Parkatti, “Online Dispute Resolution: Overcoming the Problems and Shackles of Territory”, 2001: https://www.cfcj-fcjc.org/sites/default/files/docs/hosted/17438-online_dr.pdf
About the author: Seun Lari-Williams was called to the Nigerian bar in 2014. He has extensive experience working as a litigation lawyer in Nigeria and as an IP Consultant. Seun has worked closely with diverse clients in the entertainment industry, helping them innovate faster while protecting their IP. He has also garnered experience working with Montgomery IP, Brussels, Belgium. He studied law at the University of Lagos, Nigeria and obtained an LL.M in IP & Competition Law from the Munich Intellectual Property Law Center, Germany. Seun is also the 2021 winner of the ALAI European Author’s Rights Award.
Email: seunlw@gmail.com
