Background
With Nigeria Air, the Nigerian Government is making its third attempt at a national carrier, with operations expected to launch in December this year.
Following the announcement and unveiling of the airline’s logo at the Farnborough Air Show in London, torrents of commentaries have circulated the cyberspace. Specifically concerning the need for a national carrier, the seemingly ‘’ugly’’ logo, and the possibility of someone making N48 million by selling the already acquired domain name to the government.
In simple words, a domain name is nothing but the name (URL) of your website. Technically, it represents an Internet Protocol (IP) source such as a server address hosting a website, or the website itself. Internet hosts use domain names as identifiers, or hostnames which appear as Uniform Resource Locators (URLs) for Internet resources such as websites e.g. www.maureen.com.
While the common terminology is that you “purchase” a domain name, in reality, you’re only leasing it. You retain ownership of a domain by paying an annual fee.
Why do you need a domain name?
Having your own domain name increases the name recognition of your business and makes it easier for customers to remember your address.
Having your own domain name indicates that you have a serious internet presence which adds a level of trust and integrity to your business, helping to build your brand in the process. In addition, domain names containing keywords help to get your business higher up in search engine rankings.
Examples of domain name disputes
- Cybersquatting – if a person registers a domain name without having any rights thereto, in bad faith, in order to sell it to the rightful trademark owner.
- Typo squatting – if a person misspells a well-known domain name and registers it in his/her name and attracts web users that might misspell the domain name of a popular brand.
- Reverse domain name hijacking – if a person tries to take a domain name away from the rightful owner through an (ICANN) Internet Corporation for Assigned Names and Numbers) arbitration process, after the rightful owner agreed to sell the name and then relies on bad faith use of such name in the proceedings.
The Nigeria Air case is a typical example of cybersquatting and will be explained more extensively.
Cybersquatting
Section 25 of the Cybercrimes Act is instructive here. The Cybercrimes Act recognizes this act as a crime that even attracts possible jail term and fine implications. Key driver of the disputes here is the rise of “cyber squatters” who register the names of web domains linked to famous brands so they can either sell counterfeit goods or demand money from the brand owner before they relinquish ownership. Brands like Swarovski, Armani, Burberry, Cartier and Dior have recently been involved in this.
The main intent behind cybersquatting is usually to mislead, destroy reputation and deprive others from registering the name.
The issue of Nigeria Air gets even more interesting when one investigates NigeriaAir.ng and NigeriaAir.com.ng, which are both not active. Both websites, according to WHOIS records, were registered on Wednesday, 18 July 2018. Which is the same day that Nigeria’s Minister of Aviation announced the plans to launch Nigeria Air.
Is a trademark registration important in a domain name dispute?
While it is not the only factor to be taken into account, a trademark registration is nonetheless the most powerful single factor for succeeding in a dispute involving a domain name which incorporates the trademark.
For this reason, the registration of a trademark, in addition to the registration of your domain name is of paramount importance.
The test of bad faith
The following factors are elements that a court can consider to determine whether the domain name was registered in bad faith.
- Does the domain name holder have trademark rights to the domain name?
- Is the domain name the legal name of the domain name holder, or some other name that is otherwise commonly used to identify that person?
- Has the domain name holder made use (prior to the dispute) of the domain name in connection with a bona fide sale of goods or services?
- Is the domain name holder attempting to divert consumers from the trademark owner’s website in a confusing way, either for commercial gain or in an attempt to tarnish or disparage the trademark brand?
- Has the domain name holder offered to sell the domain name to the trademark owner (or anyone else) for financial gain without having any intent to use the mark with the sale of goods or services?
- Has the domain name holder behaved in a pattern of registering and selling domain names without intending to use them in connection with the sale of goods or services?
- How distinctive and famous is the trademark owner’s brand/products?
The answers to these questions will determine which course to take.
In this case, for the government to challenge the existing domain name, they must show:
- That they own a trademark that is the same or confusingly similar to the registered second level domain name
- That the party which registered the domain name has no legitimate right or interest in the domain name, and
- That the domain name was registered and used in bad faith.
If the Government successfully proves all three points, then the domain name can either be cancelled or transferred to them.
Instances on issue of ‘bad faith’
In Amazon Technologies, Inc. v. Robert Nichols, exorbitant offers to sell disputed domain names were held to be further indications of a lack of a bona fide purpose. This one seems to be quite familiar to the issue at hand here.
In GWG Holdings, Inc. v. Jeff Burgar, however, the Panel noted that since the Respondent registered the disputed domain name some eleven years before the Complainant was incorporated, it was impossible for the Respondent to have known of the Complainant or to have been motivated by bad faith towards a non-existent company when it registered the disputed domain name.
Also, in CKL Holdings N.V. Paul Flammea, the Panel noted that the disputed domain name was created a year before the Complainant’s trademark was applied for and nearly two years before trademark registration was granted. There was no evidence that the Respondent had any privileged prior knowledge or reason to anticipate the trademark plans of the Complainant or of the trademark’s previous owner.
In view of the foregoing, the odds seem to be largely in favor of the Government, considering the date that the domain name was registered and the bad faith test. How this is going to unfold is certainly going to be a great watch anyway. In Nigeria, like in football, anything can happen!