INTRODUCTION:

A domain name is the address where internet users can access your website. Its importance cannot be understated as this is what companies use to direct traffic to their online businesses and basically represents their online brand. So what should you do if you feel like someone is stealing your online brand to direct traffic to their website?

This article aims at giving a brief summary of what cybersquatting is and what you can do if your company falls victim to it.

 

WHAT IS CYBERSQUATTING?

Some dodgy characters out there have developed the habit of using the hard-earned reputations and goodwill of other companies to direct traffic to their websites for financial gain. Cybersquatting can be defined as the practice of registering names, especially well-known company or brand names, as Internet domains (e.g. www.whatever.com), in the hope of reselling them at a profit or to confuse customers into thinking that the website belongs to the other company.

You might think that the name of your company website is not that important, but a domain name is a very important intellectual asset as this is what is used to identify your company, its products and its services in the online arena in the same way that the Nike trademark is used to identify its shoes and clothes.

Therefore, confusion in the minds of your customer, caused by the registration of a website by someone else in a name similar or identical to yours, will inevitably lead to the diversion of business from your company into the hands of a cyber squatter, causing loss of profit and online traffic to your company.

[1]WIPO “IP Issues Related to Internet Domain Names” https://www.wipo.int/sme/en/e_commerce/domain_names.htm

I’VE BEEN CYBERSQUATTED, WHAT CAN I DO?

In South Africa, disputes relating to the registration of domain names are governed by the provisions of The Electronic Communications Act no.25 of 2002 (the Act) and its regulations. The South African Institute of Intellectual Property Law (‘SAIIPL’) provides the procedures and criteria for the establishment and disestablishment of second domain names (such as the “.co.za” domain name) and for delegations to such second domain names.

The procedure for lodging a domain dispute with SAIIPL is much cheaper and quicker than approaching the courts for relief. A complainant who institutes these dispute resolution proceedings under the regulations must prove, on a balance of probabilities that it has rights in respect of a name or mark which is identical or similar to the domain name; that the domain name in the hands of the registrant is an abusive registration, or that the domain name in question is an offensive registration.

In Namibia, however, we don’t have the same domain specific protection that is afforded by the South African Electronic Communications Act. However, the World Intellectual Property Organization has online procedure you can go through where an independent expert will decide whether the domain name should be returned to you, and the accredit domain registrars are required to follow this decision.[1]

If you want a legally binding solution, approaching the courts for interdictory relief will be the best option. This is why it is recommended that you register a Trademark over your company name or the name you will include in your domain name. Trademark protection is legally enforced by our courts which have the authority to stop any trademark infringements.[2]

As Bill Gates once famously said: “The internet is becoming the town square for the global village of tomorrow”, I would, therefore, strongly recommend that you ensure that all your internet customers have the correct directions to your little shop.

[1] WIPO “IP Issues Related to Internet Domain Names” https://www.wipo.int/sme/en/e_commerce/domain_names.htm  accessed on 23/05/20.

[2] http://www.bipa.na/intellectual-property/trademarks/  accessed on 23/05/20.

Katuna Kamuhanga

Director at Kamuhanga Hoveka Samuel Inc.