A lot of businesses are now going online, trying to take advantage of the internet boom in Nigeria. One of the first things to do while you are trying to establish an online presence for yourself, your company or business is to register your domain name ie your website address. For instance, Coca-cola’s website is www.coca-colacompany.com.  There may however be a problem where someone else has a similar website address which may lead to confusion with that trademark. Unlike in the process of registering a company where you can do a name search prior to registration and the company name will not be registered if confusingly similar to another, for a website address or domain name, there is no central registry to conduct such a search.  Therefore another person with a company called cola crafts ltd may register the domain name www.colacrafts.com. Coca-cola may be able to successfully challenge the registration of the domain name colacraft and have the name deregistered, on the ground that it is confusingly similar to its trademark cocacola.
Therefore, if your company ever falls into this predicament or faces this challenge, it is important to note a few things so that you don’t run into the problem of having your domain name taken away from you by someone who claims to have a better claim to that name, thus losing all your customers and all the online reputation you may have built for yourself over the years. My first advice is to be proactive and to register your trademark (especially where quite popular and reputable), as many similar domain names as possible in order to protect from any possibility of cyber-squatting or hijacking. However, if you have been caught napping, there are still some remedies-
  1. Ensure that you have an existing legitimate trademark in that name. The UDRP policy which is the rules governing such situations stipulates that the website address should not be identical or confusingly similar to an existing legal trademark or service mark. Therefore to be able to successfully protect your website or trademark, you need to have a registered trademark interest in the name. Merely having a website with a confusingly similar name will not be enough to stop the infringing website address
  2. ensure that you have rights or legitimate interests in respect of the website address; and
  3. show that the person is using the domain name in bad faith.
Let me re-iterate that a legitimate website owner will not lose his name to you, even if confusingly similar, if you don’t have trademark over the name. He loses his website address if it is confusingly similar ONLY if someone else has a legitimate trademark in it.  For instance, I will be unable to challenge a website with www.adorableadaorah.com as an address even if I have one calledwww.adoreadaorah.com if I don’t have a trademark in it. This is not the only criteria however. Making reference to the Coca-cola example above, if Coca-cola can show that the website address was not only confusingly similar to theirs but that the person who registered the site also had a bad faith intention in doing so, the domain name registrar can order that the domain name be transferred to Coca-cola. To protect your website, the three elements must exist.
Different circumstances can show bad faith. Some of them are that you registered the name primarily for the purpose of selling or renting the website address to the owner of the trademark or a competitor for a profit, to prevent the trademark owner from using it, to disrupt the business of a competitor or to use the trademark to confuse and divert users and customers to your site in order to make some money.
This policy has been put up to stop cyber-squatting and a practice popularly known as domain name hijacking, where people intentionally register website addresses in order to profit of it and resell it later. Eg Facebook recently won damages worth about $2.8 million in a cyber-squatting suit against various cyber squatters and typo squatters with similar names such as facebobk.com, facebooj.com, facebookwelcome.com. Also, the instance of the popular blogger Linda Ikeji, who almost lost the domain name of her popular blog to cyber-squatters also comes to mind.
However, popular trademark owners have been known to also arm twist or muscle smaller domain name owners who have rightful interest in those names but don’t have the resources to defend the legitimacy of their website addresses. This is known as reverse domain name hijacking. Sometimes they do so to stifle online competition or to prevent website set up to criticize them.
For the genuine registrant of a website address however, hope is not lost. You can still retain your name. All you need to do is to ensure that you have been using the website address for legitimate business before the dispute came up, your business or organisation has been commonly known by the website address even if you don’t have a trademark right in it or you have been using the website address non-commercially without intent to mislead consumers or tarnish the reputation of the tarnish the trademark. Therefore, if cola craft can show that even though the name is confusingly similar to coca-cola, the website address has been known long before the dispute, there was no bad faith intention in registering the name and it was not meant to divert consumers, the owners of the site may be permitted to retain the name. For instance Nissan motors were unable to get Nissan computers to relinquish its use of Nissan.com because the website was named after its owner Uzi Nissan and had been used for about 20 years prior to Nissan motors’s change of name from Datsun.

For inquiries and more clarification on contents of this write-up, feel free to contact me