Abstract

There is absolutely no doubt that the emergence of Computers and its consequential scientific and technological improvements have increased drastically the complex nature of information in today’s world. These improvements have become a subject of diverse study, discussions and polemics. One of such discussions concerns Cybersquatting. Cybersquatting has become a major issue in Information and Communication Technology today and its resulting legal implications have come under consideration for both scholars and legislators around the World. In the light of these, Nigerian Law should adequately cater for this ever growing problem, and Nigeria’s policies and laws should adequately reflect the dynamic nature of the virtual world.

cyberrcrimes

Credit: peoplesdailyng.com

Introduction

The application of Computers[1] in virtually every facet of human life has contributed immensely in both positive and negative ways. Computers as tools introduce new aspects of complexity and current technological developments have made computers widely available as a result of increased competition and the reduction in prices of electronic devices. This in turn has resulted in an increasing rate of problems associated with the advancement in information and communications technology. One of such problems is Cybersquatting[2].

Cybersquatting cuts across known areas of Law especially Tort, Intellectual Property and Criminal law. It contains elements of trademark infringement, passing-off, deceit, as well as impersonation and fraudulent misrepresentation.

What Is Cybersquatting?

The definition of Cybersquatting under Nigerian Law has not been left to the arguments of academicians. The Nigerian Cybercrimes (Prohibition, Prevention etc.), Act, 2015 has provided a definition of which, for the purpose of clarity is reproduced below:

“The acquisition of a domain name over the internet in bad faith to profit, mislead, destroy reputation, and deprive others from registering the same, if such a domain name is:

  1. Similar, identical, or confusingly similar to an existing trademark registered with the appropriate government agency at the time of the domain name registration:
  2. Identical or in any way similar with the name of a person other than the registrant, in case of a personal name; and
  • Acquired without right or with intellectual property interests in it.”

 The following illustrations will explain this definition:

Illustration 1: If I begin to sell infused water bottles with my trademarked name being “infuzedwaterbottlez” and I decide to create a business profile on the internet with the name “www.infuzedwaterbottlez.com”, only to find out such a name already exists registered by  Mr. A carrying on business as a water bottle trader.

Illustration 2: My name is Odudu Busa Inem, I am a writer and my books are bestsellers. Mr. A registers a domain with the name “www.odudubusainem.com”.

If Mr. A’s reasons for doing any of the above is; to profit financially (probably by selling the website to me), or to profit from my goodwill, or to mislead the public, or to destroy my reputation as a business man or writer or individual, or it is simply just to deprive me from registering same. Mr. A is a Cybersquatter.

The Anticybersquatting Consumer Protection Act of the United States[3] defines the term as:

“The registration, trafficking in, or use of a domain name that is identical to, confusingly similar to, or dilutive of a trademark or service mark of another that is distinctive at the time of registration of the domain name, without regard to the goods or services of the parties, with the bad-faith intent to profit from the goodwill of another’s mark (commonly referred to as ‘‘cyberpiracy’’ and ‘‘cybersquatting’’) —

 results in consumer fraud and public confusion as to the true source or sponsorship of goods and services;

  • impairs electronic commerce, which is important to interstate commerce and the United States economy;
  • deprives legitimate trademark owners of substantial revenues and consumer goodwill; and
  • places unreasonable, intolerable, and overwhelming burdens on trademark owners in protecting their valuable trademarks.”

From the definitions above, it can be gleaned that Cybersquatting as a problem consists of the following elements:

  1. the registration or acquisition of a domain name[4]
  2. the registration or acquisition must have been done in bad faith
  3. there must be a combination of any or all of the following intents:
    1. to profit from such registration,
    2. to mislead or confuse the public,
    3. to destroy the reputation of another or
    4. to deprive another of registering same.

Cybersquatting in Nigerian Criminal Law

Commercial activities on the Internet are ever advancing and consequently domain names for these businesses have become increasingly valuable. Needless to say, this has resulted in regular and unending brawls over these names. Cybersquatters usually register these names with any of the intents outlined above, but mostly to profit from such registration by selling these names to the rightful owners usually at high prices.

Some countries have specific laws against cybersquatting beyond the normal rules of trademark law. The United States, for example, has the U.S. Anticybersquatting Consumer Protection Act (ACPA) of 1999 which is intended to provide protection against cybersquatting for individuals as well as owners of distinctive trademarked names.[5]

Fortunately, Cybersquatting has been criminalized in Nigeria with the coming of the Cybercrimes (Prohibition, Prevention etc.) Act of 2015. The criminal law governing it is contained in Section 25 of the Act and it is reproduced below:

25 (1) 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 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.

(2) In awarding any penalty against an offender under this section, a court shall have regard to the following-

  • a refusal by the offender to relinquish, upon formal request by the rightful owner of the 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; or
  • an attempt by the offender to obtain compensation in any form for the release to the rightful owner for use of the 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 Government of Nigeria

(3) In addition to the penalty specified under this section, the court may make an order directing the offender to relinquish such registered name, mark, trademark, domain name or other word or phrase to the rightful owner.

What can be gleaned from the above is that there must first be a name, business name, mark, trademark, domain name or other registered word or phrase which must be owned and be in use by an owner. An offender’s act must be to interfere with the owner’s name, business name, mark, trademark, domain name and his intent must be any of those stated supra. This interference must have occurred over any computer network including but not limited to the internet. This act must also have been unauthorized.

Though the marginal note of Section 25 above is simply “Cybersquatting”[6], it is quite obvious that the section above apart from making provisions against Cybersquatting, also provides for other offences like “username squatting[7]”, and “brandjacking[8]”. It does this by creating a class in addition to domain names i.e. “a name, business name, trademark, domain name or other word or phrase registered, owned or in use…”.

The use of the additional words “name, business name… or other word or phrase registered, owned or in use” makes the provision wide enough to cover username squatting and brandjacking. By the foregoing provision the name of the Complainant need not be registered or trademarked, it is sufficient if that name is owned by him i.e it is what he is known by, and/or it is in use at that material time.[9]

It is worthy of note that the misrepresentation by a Cybersquatter can also birth a criminal action of Obtaining by False Pretences[10] and as such a criminal prosecution can be brought against the offender.

Cybersquatting as a Civil Wrong

As has been earlier stated, Cybersquatting cuts across many areas of law such as Passing-Off[11] and Impersonation, Trademark infringement[12], it may even include Fraudulent misrepresentation as well as Deceit[13] in some instances. Cybersquatting can create concurrent liabilities in Tort and Contract as well as in Intellectual Property Law.

The law governing these civil wrongs are at an advanced stage in our legal system, so in any case where the intent of the Cybersquatter falls within the ambits of any of the above areas, an adoption mutatis mutandis of the principles and laws governing these wrongs will be sufficient. We will consider two areas of civil law were cybersquatting presents itself.

Cybersquatting and Passing Off

An action lies in passing off when a misrepresentation has been made by a defendant in the course of his trade or business to prospective customers and such misrepresentation is calculated to injure the business and goodwill of another and as such causes damage to that person’s business or goodwill or will likely do so.[14]

A Cybersquatter may also pass off his goods and services as that of another creating a cause of action in passing off. In this area, one way Cybersquatters engage in this type of wrong is by “typosquatting”15. Typosquatting can be equated to trading with a name resembling that of the Plaintiff16, which can mislead the public into thinking they are doing business with the Plaintiff.17

An action in passing off may also lie in cases of an infringement of an unregistered trademark18. The courts lack jurisdiction to determine an infringement of trademark action when that trademark is not registered19.

The laws and principles governing the tort of passing off can be applied to protect the business interests of individuals who are victims of cybersquatting; this of course is if the circumstances fall squarely within the domain of passing off.

Cybersquatting and Trademark Infringement

Section 5(2) of the Trade Marks Act makes provision for what constitutes an infringement of a trademark. In describing an infringement, it states:

“…that right shall be deemed to be infringed by any person who, not being the proprietor of the trade mark or a registered user thereof …, uses a mark identical with it or so nearly resembling it as to be likely to deceive or cause confusion, in the course of trade, in relation to any goods in respect of which it is registered, and in such manner as to render the use of the mark likely to be taken either –

  • as being use as a trade mark; or
  • in a case in which the use is use upon the goods or in physical elation thereto or in an advertising circular or other advertisement issued to the public, as importing a reference to some person having the right either as proprietor or as registered user to use the trade mark or to goods with which such a person as aforesaid is connected in the course of trade.”

The celebrated Canadian case of Microsoft vs. MikeRoweSoft20 is apt in describing what S.5(2) states.

In that case a Canadian student, Mike Rowe registered a domain name “MikeRoweSoft.com” in August 2003. Rowe claimed to have registered this name as a web design business and he chose his name adding the word “soft” to it. Computer Giants Microsoft claimed the domain name “MikeRoweSoft.com” was an infringement of their corporate name which was a worldwide known trademark. In January 2004, the Claimant’s Solicitors sent a letter to Mike Rowe. Rowe replied asking for compensation and Microsoft offered him the sum of $10, which was the cost of registering the domain name. Rowe angrily refused the paltry offer and asked for $10,000. Microsoft declined the payment of such a sum and swung into legal action claiming Rowe was a Cybersquatter and set up the site to profit heavily from its sale to Microsoft.

Both parties later settled out of court, with Microsoft taking control of the domain and paying adequate compensation to Mike Rowe which included an Xbox.

Mike Rowe’s act was clearly an infringement of Microsoft’s trademarked name “Microsoft” as it was a mark identical with it or so nearly resembling it as to be likely to deceive or cause confusion and under our laws same will have been held to be a trademark infringement.

Again, in the Kenyan case of Union des Associations Europeennes de Football (UEFA) v. Funzi Furniture[15], the Defendant registered a domain name “www.championsleague.com”. The Claimant’s who were the organizers of the world famous “UEFA Champions League”, a football championship, instituted an action against the Defendants who had requested that $1,450,000 be paid to for the site. The Court held that there was a trademark infringement by the defendant.

It is the writer’s hope that the Nigerian Courts will make a pronouncement on the issue in the near future. Now, however, resolve can be made to the judgments and pronouncements of English Courts and indeed other jurisdictions concerning Cybersquatting.

The Way Forward

Needless to say, there is a dearth of materials on Cybersquatting and indeed a great many other Computer related issues in Nigeria. This situation is not due to a lack of cases concerning Cybersquatting in Nigeria. The Nigeria Internet Registration Association (NIRA) which has the authority to regulate the country code top-level domain (ccTLD); “.ng.” had published an article concerning the growing incidences of cybersquatting in Nigeria.[16] This article from NIRA is proof that there are indeed incidents of Cybersquatting in Nigeria, which also happen to be growing at an alarming rate.

Our Legislators have done a good job with the Cybercrimes Act. The Act has adequately provided for the problem of Cybersquatting. We hope that our criminal and indeed civil case law will develop adequately enough to cater further for this problem. It can be argued that no one is instituting actions in Court and thus the judicial pronouncements and precedents of our Courts cannot exist in vacuo. With more domain name registration of internet-reliant businesses, our laws are bound to develop.

Since 1999, the World Intellectual Property Organization (WIPO) has provided a working arbitration system[17] where owners of trademarks can approach to claim a squatted site. Nigeria has been a member of WIPO since 1995. Nigeria can benefit from the services rendered by the Centre. Our Courts can learn a great deal from cases instituted at the Centre and in turn help to curb the activities of cybersquatters in Nigeria.

As innovation and invention continues in our ever changing world, our matching the strides of these changes by staying abreast with novel issues would be for the betterment of our legal system.

 

Busa Inem is a Legal Practitioner who is in active legal practice as a serving Corps Member. He is the author of several articles mostly on ICT/Communications Law and Cyber Law Topics.

 

[1] A “Computer” means an electronic, magnetic, optical, electrochemical or other high speed data processing device performing logical, arithmetic, or storage functions and includes any data storage facility. All communication devices that can directly interface with a computer through communication protocols shall form part of this definition. This definition excludes the following; portable hand held calculator, typewriters and typesetters or other similar devices. Cybercrimes (Prohibition, Prevention Etc. Act 2015 s. 58

[2] The term is derived from the word “squatting”, which implies the occupying of space, a place or building without legal authority or permission to do so.

[3] s.2 (1)

[4] A domain name simply put is an internet address like www.example.com or www.nigerianlawschool.edu.ng. It has also been defined by the Encyclopaedia Britannica as an “Address of a computer, organization, or other entity on a TCP/IP network such as the Internet.”A domain name must be unique on the Internet. The mnemonic character of domain names (e.g., http://www.britannica.com) also assists consumers in locating Internet-based businesses. From: “domain name.” Encyclopædia Britannica. Encyclopædia Britannica Ultimate Reference Suite.

Chicago: Encyclopædia Britannica, 2011.

[5] “Cybersquatting”, https://en.m.wikipedia.org/wiki/Cybersquatting/ accessed 5 January 2016

[6] It is settled law that a marginal note to an enactment does not form part of the enactment and is intended for convenience of reference only. See the Interpretation Act s. 3(2); See also Yabugbe v. COP (1992) 1NSCC 651and Uwaifo v. A.G. Bendel State (1982) 7 SC 124 pp. 187-188 where it was stated per Idigbe JSC that: “…while the marginal notes to a section…cannot control the language used in the section, it is at least permissible to approach a consideration of its general purpose and the mischief at which it is aimed with the note in mind

[7] “Username squatting” is the unauthorised registration or acquisition of a social media account under a person’s or organization’s name. Username squatting has the same elements as Cybersquatting except that it relates to Social media usernames like Twitter handles and Instagram usernames as opposed to websites in Cybersquatting. An example of username squatting will be our Mr. A registering a username without authorization on Instagram or Twitter as @nigerian_law_school or @odudu_busa_inem.

[8] “Brandjacking” is the unauthorized creation of an official social media account for an Organization. Brandjacking also has the same elements of Cybersquatting and Username squatting.

[9]  It would seem this name must have the attribute of uniqueness in some way or another.

[10] Criminal Code Act, Laws of the Federation of Nigeria 2004  s. 419

[11] Cybersquatting as a wrong disregards the fact that it is crucial that Traders be protected against unfair competition which includes the acquisition by means of false, fraudulent or misleading devices, the benefits of another’s reputation.

[12] Cybersquatting as a wrong disregards the fact that it is crucial to protect the commercial value of trademarks.

[13] Cybersquatters may wilfully make false statements with intent that these statements be relied upon by unsuspecting members of the public, this can result in the public acting on such falsity and suffering harm as a consequence.

[14] Warnink BV v. Townsend & Sons (1979) All ER 927, 932

[15] (Case no D2000-0710) ‘Union des Associations Europeennes de Football (UEFA) v. Funzi Furniture’ http://wipo.int/amc/en/domains/html/2000/d2000-0710.html accessed 20 January 2016

[16] “NIRA Raises Alarm Over Cyber-Squatting in Nigeria”, Daily Independent, July 2015, http://dailyindependentnig.com/2015/07/nira-raises-alarm-cyber-squatting-nigeria/ accessed 3 January 2016

[17] The WIPO Arbitration and Mediation Center offers Alternative Dispute Resolution options for the resolution of international commercial disputes between private individuals.  These services provided by the Centre are known to be appropriate for the resolution of Information and Communications Technology disputes and a host of other Intellectual Property disputes.  The Center is also the torchbearer in providing domain name dispute resolution services under its WIPO-designed Uniform Domain Name Dispute Resolution Policy (UDRP).

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