E-Commerce and the Law in Kenya: Domain Names, Trade Marks and Dispute Resolution
This semester, we kick off a brand new course for final year undergraduate law students on e-commerce and the law. This course aims at explaining the legal challenges that are posed by electronic commerce. We shall also contextualise and problematise on-going legal/policy developments in Kenya to regulate electronic commerce. In this blogpost, we explore the implications of the registration of domain names for trade marks. In the context of e-commerce, we examine the existing online dispute resolution mechanisms, and in particular the rules created by ICANN and KENIC for online dispute resolution of issues relating to domain-name registration.
Domain names are also known as “web addresses”, “dot com’s” or “url addresses”. In common parlance, a domain name is defined as a unique name, which represents each computer on the Internet. In other words, these are easy-to-remember names used to access sites on the world wide web eg. www.kenya-airways.com. These names map to unique ‘Internet Protocol (IP) addresses’ which are numbers that serve as addresses on the internet, allowing users to access websites on the internet eg. When you type the domain kenya-airways.com, you are mapped to the unique IP number 22.214.171.124, enabling you to access the national carrier’s webpage. The Domain Name System (DNS) translates these names into the IP numbers that are needed for transmission of information across networks. The DNS was established to find an orderly manner in which the Internet can be accessed. The choice of a domain name has become an important business decision. A domain name is registered by a company to enable Internet users to locate the company’s site on the web.
There are two main forms of domain names classified as, first, country top-level domains and denoted by ccTLD’s, and second, generic top-level domains denoted by the abbreviation: gTLD’s. For example “ilabafrica.ac.ke” refers to the website of @ilabafrica at Strathmore University. This site is registered in the academic (ac) domain in Kenya (ke). The country code is called the “top-level domain” (ke) (TLD), and the “ac” refers to “academic”, the second-level domain (SLD). The SLDs are unique and identify the owner of the website. The universal resource locator (URL) would be as follows: http://www.ilabafrica.ac.ke/.
The technical management of the domain name system is in the hands of the Internet Corporation for Assigned Names and Numbers (ICANN). However, in the gTLDs, the registrations themselves are handled by a number of Internet registrars accredited by ICANN, that can be found at ICANN’s site at http://www.icann.org. One can also check whether a domain name has already been registered, either by searching via a registrar’s site, or by using a ‘Whois’ search, like that offererd by UWhois, at http://www.uwhois.com. For registrations in the ccTLDs, the registration authority designated for Kenyan ccTLD is Kenya Network Information Centre (KENIC).
It is important to note that the registration and/or the use of a domain name may infringe on trade mark rights. According to the Trade Marks Act, a trademark owner is given the exclusive rights: to use the trademark to identify his goods or services; to prevent others from using and marketing the same or a similar trademark for the same or similar goods or services; to authorize others to use the trademark, (e.g. by franchising or licensing agreements) and in return for payment. As such, any unauthorised use of a trade mark can be redressed through trademark infringement action in the case of a registered trade mark. For unregistered trade marks, a passing-off action is available.
A trade mark is a distinctive sign, used by a merchant to identify its goods or services and to distinguish them from those produced or provided by others. As such, there are many characteristics of a domain name will render it unregistrable as a trade mark: for example, descriptive terms are generally not registrable as trade marks, as they are not deemed to be capable of distinguishing the proprietor’s goods and services from that of others. The use of key words from the industry may also not be registrable as trade marks, as these marks are reasonably required for use in the trade. for example, “creamy” for dairy products. These bars to registration do not apply to domain names. As long as the domain name meets certain requirements, it is registrable as a domain name on a “first-come-first-serve” basis. In conclusion: one.com & one.co.ke versus 45 x 150 = 6750?
In domain name registration, one must pick a domain name that is not the trademark of another company, particularly a well-known trademark. This is because our law treats registration of another person’s trademark as a domain name as trademark infringement, also known as ‘cybersquatting’, and the offending company might have to transfer or cancel the domain name, and also pay damages. Also, all domain names registered in the gTLDs like .com, as well as many registered in the ccTLDs, are subject to a dispute resolution procedure (described below) that allows a trademark or service mark owner to stop the cybersquatting of their trademark. Thus cybersquatting is the registration of famous names as URL’s e.g. coke.com in hopes of selling them to the rightful owner for profit. Cybersquatting is distinct from registration of desirable non-trademarked generic names e.g. book.com and selling it to a willing buyer.
If you find that someone else is using your trademark or service mark as a domain name, what can you do? Some unscrupulous people have made a practice of cybersquatting, usually to extract money from the rightful owner of the name or to mislead or confuse consumers. If you find that your trademark or service mark is being cybersquatted, there is a simple online procedure you can go through where an independent expert will decide whether the domain name should be returned to you, and the registrars are required to follow this decision. This Uniform Administrative Dispute Resolution Policy (UDRP) was first recommended by World Intellectual Property Organization (WIPO) as a result of its Internet Domain Name Processes and then adopted by ICANN, and you can find information about it at WIPO’s site at http://arbiter.wipo.int/domains/. All registrants that register domain names in top level domains with registrars that subscribe to the UDRP accept the terms of the UDRP, which are invariably incorporated by reference into the domain name registration agreement between the registrar and the registrant. Clause 4 of the UDRP requires registrants to submit to mandatory administrative proceedings adjudicated by ICANN-approved dispute resolution service providers such as the WIPO Arbitration and Mediation Centre.
Closer to home, KENIC’s Alternative Domain Name Dispute Resolution Policy (ADRP) which was modelled on ICANN’s UDRP provides for voluntary alternative dispute resolution proceedings for disputes relating to the Kenyan ccTLD. The process under the ADRP involves impartial mediation overseen by KENIC as a first step, followed by arbitration (if the mediation fails to achieve a resolution within 15 days). The arbitrator is agreed upon by the parties or – failing such agreement – appointed by a KENIC-accredited dispute resolution service provider. The arbitrator can either: dismiss the dispute; order the transfer of the domain name registration (in case of abusive registrations); or cancel the domain name registration (in case of offensive registrations).
KENIC’s ADRP defines
‘abusive registration’ as a domain name which either: was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to a complainant’s rights; or has been used in a manner that takes unfair advantage of a complainant’s rights.
‘offensive registration’ as a domain name in which the complainant cannot necessarily establish rights, but whose registration is contrary to law, against good morals or likely to be offensive to any class of person.
Appeals are heard by a panel of three arbitrators appointed by a KENIC-accredited dispute resolution service provider. Where a party to proceedings before KENIC or the arbitrator initiates court proceedings in relation to the domain name dispute that is before KENIC or the arbitrator, the mediation or arbitral proceedings are suspended immediately.
In the case of Kenya Airways v. Caroline Kariemu, KQ filed a complaint in 2000 as the holder of several registered trade marks covering the words “Kenya Airways”. Kariemu registered the domain name, kenyaairways.com in 1999, which did not resolve to any website. KQ argued that Kariemu had registered a DN which was identical to its name and trade mark. Also that Kariemu had no legal right to user the DN, and that it was not being used for a legitimate non-commercial purpose. The Panel member: this procedure is regulated by the ICANN Uniform Domain Name Dispute Resolution Policy (the “Policy”) and by the Rules of Uniform Domain Name Dispute Resolution Policy (the “Rules”).
According to article 4(a) of the Policy, Complainant must submit evidence establishing that in a specific case each of the following three elements are present:
(i) that the domain name is identical or confusingly similar to a trade mark or service mark to which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
It was held that the three requirements required under the Policy were present in the case. Thus, in accordance with the remedy sought by the complainant, KQ, it was ordered that “kenyaairways.com” be transferred to it.