Background on domains…… I wrote this article earlier this year…..
A domain name is a label separated by a dot, which allows internet users to easily find and communicate with web sites and other Internet Protocol (IP) based communication services.
A domain can use first level extensions e.g. country code Top level Domain (ccTLD) like .ke for Kenya or a generic TLD (.com, .net, .info .org etc).
Domain names are a superb marketing tool, a method to pass information about the business or service being offered. A domain name is a highly valuable resource for any company. Internet domain names are registered on a first-come, first-served basis by registering authorities, such as Kenya Network Information Centre, which administers the .ke name space.
Domain names have become more interesting to marketers because of their advertising and marketing potential, rather than just being used to label internet resources; they are now used in ways that are harmful to some businesses.
For instance, one can register as a pornographic site, which would be contradictory to the known meaning of the word moral. Similarly, one can use a name that is more famous as a domain to drive visitors to the site.
As a result, large corporations use their trademark or brand name as a domain name because it helps customers remember it easily and distinguish it from a competitor’s product, which reinforces brand identity.
Because domain names are registered on the basis of first come, first served, registering authorities do not question whether a proposed domain name will cause likely confusion with another’s brand or trademark. For instance, Verizon, a large international technology corporation revealed that it spends up to 77 million Kenya shillings ($1million) in registering and safeguarding their domain.
This has allowed some unscrupulous people to take advantage of the ignorance and to register domains that are not related to them and drive up traffic in the process infringing on trademarks, trade names, brands or copyrighted characteristics of a company.
Some of the domains are registered with the intention of later selling them or transferring the domain name to another owner for valuable consideration; or simply to engage in unfair competition and misleading advertising by associating their own product or service with a better-known brand.
What would happen if someone registered a domain in the name of your business, then five years from now, the business is a large entity but unable to trade online in its trademark because it is owned by another person?
This would result in a domain name dispute which would be a big concern for a business. It is just like a trade mark that is protected under the Copyright Act of Kenya. Domain name disputes nevertheless remain complex and require separate regulations.
For instance, popular online auction site EBay is engaged in a protracted legal tussle trying to reclaim , which is registered by an individual.
Jennifer Lopez has also filed a dispute at the World Intellectual Property Organization (WIPO) seeking to get back from one of her fans.
South Africa is perhaps one of the leading cases where the government had to result to international measures to get back which was registered under an individual.
Under Article 30 of the Law on Intellectual Property, which took effect on July 1, 2006, such acts as registering or possessing the right to use a domain name identical or confusingly similar to a protected trade name or mark of another, for the purpose of benefiting from or prejudicing the reputation and popularity of the respective trademark, trade name or geographical indicator is viewed as an act of unfair competition.