Disputes on domain names

In this age where the internet has made the world a global village, every brand needs to have domain name through which it can increase its visibility. A domain name is a name through which an entity can be located on the internet. The last part of a domain name (suffix) identifies the type of top level domain that the name is on. There are generally two types of top level domains: generic top level domains (gTLDs) which are administered by The Internet Corporation for Assigned Names and Numbers (ICANN) and country code top level domains (ccTLDs) which are administered by country-specific organisations. Some of the suffixes found in domain names include .gov for governments, .edu for educational institutions, .org for organisations and .com for commercial business.

The country code top level domain for Kenya is identified by the suffix .ke and it is administered by the Kenya Network Information Centre (KeNIC). In our last article, we reported that KENIC has now rolled out second level domain names in addition to third level domain names.

Domain names, like other intellectual property rights, are subject to abuse from parties who want to falsely associate themselves with a popular mark or otherwise commercially benefit from the owner of a mark. Such acts are collectively called cyber-squatting. An owner of a mark which has been infringed upon through a domain name can initiate a dispute resolution process. Disputes regarding gTLDs are decided according to the Uniform Domain Name Dispute Resolution Policy (UDRP) while disputes regarding ccTLDs are decided in accordance with country specific policies or the UDR where it has been adopted. Kenya applies the Alternate Domain Name Dispute Resolution Policy which is available here.

Early this year, Tinder presented a cyber-squatting complaint at the World Intellectual Property Organization (WIPO) Arbitration and Mediation Centre against owners of fourteen domain names. In the decision the sole arbitrator held that the owners of the offending  domain names acted in bad faith as they the word ‘Tinder’ is already well known in relation to dating services and he further ordered the transfer of the offending domain names to Tinder.

Most recently, the Spanish football club FC Barcelona presented a complaint to the same Centre against the owner of the fcbarcelona.soccer domain name. The owner of the disputed name had never actively used the domain and he had contacted the club in a bid to sell the domain name for between US$ 400,000 and US$ 450,000.00. The arbitrator stated that the owner of the disputed name did not have a legitimate interest in the name and therefore ordered the transfer of the name to FC Barcelona.

So what does an arbitrator or a court consider in deciding such a dispute? Under the UDRP and the Kenyan policy, a complainant has to establish that the disputed domain name is identical or confusingly similar to a trade or service mark in which the complainant has rights, the registrant has no legitimate interest in the name and that the name is being used in bad faith.  For the first limb, the complainant therefore has to prove ownership or interest in a mark and the confusing similarity with its mark. In the Tinder decision above, all the offending names contained the word tinder. For proof of bad faith and lack of legitimate interest, a court/panel may consider whether the registrant is commonly known by that disputed domain name or whether the name was being used for a legitimate commercial use.

If a complainant is successful before a court/panel, it may order cancellation of the domain name to the complainant or transfer to the complainant.

Please contact us at Info@cfllegal.com should you require further information.

Authors: Moreen Mwangi

                Lorna Mbatia