In June, the social networking site known as Facebook unveiled its personalized URL function, allowing users to register customized web addresses for their Facebook pages and profiles.1 Previously, all Facebook users were assigned URLs with the Facebook.com domain name followed by a random series of letters and numbers (i.e. facebook.com/profiles.php?id=24071). The new vanity URL feature, however, enabled users to customize their own Web address to read facebook.com/username.2 During what has been called the "great Facebook land rush of 2009" millions of people jumped at the chance to register a customized name on the popular social networking web site.3
Once a URL username has been selected, it is no longer available to others and cannot be changed or transferred to other parties.4 For this reason, Facebook’s personalized URL launch has raised familiar legal concerns for trademark owners of well-known brands. Within days of the launch, cybersquatting—a form of trademark piracy by registering potentially-valuable Internet domain names for resale to trademark owners5—became a legitimate issue for trademark owners of popular names and companies.6 Facebook squatters quickly registered names like faebook.com/dellcomputers, facebook.com/iphones, and facebook.com/Nasa to profit, financially or otherwise.7 This emergence of cybersquatting with usernames has added confusion to an area of law, which has only recently been addressed in legislature. This article will cover (1) a brief history of cybersquatting, (2) the importance of preserving trademarks on social networking sites, (3) the need to police trademark usage, (4) the benefits of federal trademark registration, and (5) practical steps for protecting trademarks on social networking sites.
A Brief History of CyberSquatting. Originally, cybersquatting became a legal issue with the rise of the Internet and the creation of domain names.8 In essence, domain names are like street addresses for the Internet – they allow an Internet server to find a particular website.9 Domain names are a form of web identification selected by the individual or company and typically relate to the particular service or product being offered.10 There are two parts to every domain name.11 The first part, or the top-level domain, follows the dot (‘.’) in every web address.12 The most common top-level domains are ".com" for commercial enterprises, ".org" for non-profit organizations, ".edu" for colleges and universities, and ".gov" for government entities.13
In addition, every domain name has a second-level domain, which is the name that directly precedes the dot in every web address.14 So, for example, in the web address www.dupageco.org, the ".org" is the top-level domain while "dupageco" is the second-level domain. Most legal issues arise regarding the second-level domain because there cannot be two identical second-level domains under the same top-level domain.15
Claiming or Recovering a Domain Name. Since domain names are assigned on a first-come-first-serve basis, individuals act quickly to register not only their company names, but names of their products as a tool for branding and advertisement.16 To acquire a domain name, an individual or company must first request the name and file an application with an accredited domain name registrar.17 If a particular domain name is already registered, an individual must choose another name or try to acquire the domain name from whomever first-registered the desired domain name.18
If neither remedy is a viable option, some registrar policies allow trademark owners to challenge the ownership of an existing domain name without taking formal legal action.19 Under the Uniform Domain Name Dispute Resolution Policy (UDRP), created by the Internet Corporation for Assigned Names and Numbers (which accredits and manages all registrars allowed to issue domain names), a trademark owner can force a transfer of domain name ownership or cancel a domain name owned by a third-party if they prove: (1) the trademark owner owns a registered or unregistered trademark that is the same or confusingly similar to the registered domain; (2) the party that registered the domain name has no legitimate right or interest in the domain name; and (3) the domain name was registered and used in bad faith.20 This proceeding is relatively inexpensive and allows the trademark owner to prove his or her case before an administrative panel, rather than in litigation.21
Preserving Trademarks on Social Networking Sites. Registering domain names is quite different than registering a username on Facebook, Twitter, or like website. Sites like these allow individuals to custom create usernames as a form of cyber identity. Individuals need not prove, justify or legitimize their username selections, and most sites use very little screening process when allowing people to create new accounts and usernames. 22 When trademark holders and celebrities find their respective usernames already taken, the legal and non-legal options are less clear.
Like domain names, Facebook’s personalized web addresses are also being distributed on a first-come-first served basis.23 With a less stringent screening process, usernames such as NASA, dellcomputer, and RCN are being reserved by individuals not associated with the corporations, products and organizations referenced in their usernames.24 Third-party auction sites, such as Assetize, even provide a profitable marketplace for Web domain names where squatters can sell previously registered usernames to access sites like Facebook, Twitter, and Blogspot to the highest bidder.25
While Facebook created an online complaint form for trademark holders and celebrities to state their cases, they have not enabled a user to switch, change or transfer usernames with others.26 Companies and celebrities can request certain custom web addresses on Facebook but the social networking site requires that companies have more than 1,000 fans in order to process the request.27
Facebook has taken additional precautionary measures to protect trademark owners from squatters by limiting personalized URL registrations to non-generic terms and users that had Facebook accounts prior to announcement of the new program.28 It also has a "take-down" system similar to other sites such as eBay and Youtube that enables trademark owners to report infringing pages by submitting an automated IP infringement form.29 Accordingly, Facebook may take down the alleged infringing users because it expressly reserves the right to remove or reclaim a username at any time.30 But it remains unclear whether this notification system will help curb what has become a huge problem for trademark owners on the Internet so only time will tell.
Policing Trademark Use and Cybersqautting. Trademark holders are responsible for policing the use of their own marks. Therefore, if an infringing use of a mark goes unchallenged and it is later found that the trademark owner had knowledge of the infringer or should have had knowledge through routine diligence, the trademark owner could lose its trademark.31 Because the Internet lowers search costs, making it much easier for rights holders to monitor infringing uses, trademark owners may soon have to adopt new strategies to routinely police and protect their marks online. Monitoring and enforcement becomes significantly more difficult as illegal cybersquatting activity continues to climb. Domain name cybersquatting—the practice of buying, selling and monetizing domain names (e.g. "XYZ.com") that are identical or confusingly similar to trademarks and person’s names32—rose by 18% in 2008.33 The World Intellectual Property Organization (WIPO) also reported an 8% increase in the number of cybersquatting complaints filed by trademark holders over last year, totaling a record-breaking 2,329 complaints.34
The recent trend of allowing customized URLs and usernames on social media sites like Facebook and Twitter may only further exacerbate the problem. Trademark lawyers have cautioned rights holders that "these [social media sites] are all new avenues for abuse" because they correspondingly require trademark owners to devote more resources towards policing and enforcing their marks.35 More importantly, because the potential financial gain far outweighs the low start-up costs and corresponding UDRP penalties, there are still many incentives for cybersquatters to seize valuable trademark names. For this reason, the growing ease with which anyone may register names on Web sites has created a hotbed of new issues for trademark attorneys under both federal and state intellectual property laws.
Steps for Protecting Trademarks on Social Networking Sites. So which policy offers trademark owners better protection when dealing with personalized user addresses on sites such as Facebook? Ideally, preventative measures offer the optimal solution. Registering a domain name can cost six dollars per year36 and registering a Facebook URL or Twitter username costs absolutely nothing. Recovering one of these names from a cybersquatter, however, can cost much more. Therefore, if owners of popular or unique brands want to preemptively protect their marks online, they must implement routine and detailed surveillance policies. Many companies are now even turning to professional monitoring services to track and police new domain registrations on the Internet. These services, however, can cost roughly $5,000 to $10,000 per year.37 Other less-costly options include:
• Using search engines to monitor new domain registrations. Several organizations do their own monitoring by frequently searching for misspellings and variations on trademarked domain names on sites like Google or Domain Tools (domaintools.com).
• Setting up your own automated mark alert systems. Google and Domain Tools, among other sites, offer electronic alert systems that will automatically monitor for any use of a given term or phrase and then notify you when a new or updated use is located on the web.38
• Defensively monitoring and registering on new social media portals. Register your mark with popular social networking sites whenever possible. Mark holders should also routinely search these sites for usernames that are misspellings or variations on protected marks.
• Becoming a member of the Intellectual Property Constituency (IPC). The IPC advises the ICANN Board on managing the domain name system and represents the policy interests of trademark holders.39
Alternatively, courts have even held that a trademark owner may legally pay an online search engine operator to direct all domain name searchers to the official trademark owner’s web site rather than to other sites that employ domain names similar to the trademark.40 This may be another effective measure to minimize the damage caused by cybersquatters.
Both the ACPA and the UDRP may be helpful remedies once it is clear that cybersquatting exists. Because the USPTO recognizes domain names and other source identifiers as protectable trademarks, personalized URLs on social media sites like Facebook easily fall within this definition.41 In choosing between the two, rights holders might want to consider bringing claims under the ACPA when a case requires discovery of complicated facts, where clients "need an immediate injunction or if [the client has] a real shot at compensatory damages."42 If owners of the mark, however, can easily prove the registrant’s bad faith registration of a domain name, then it may be preferable to initiate an ICANN proceeding under the UDRP. One thing to keep in mind is that UDRP disputes are much cheaper and more efficient than going to court as they are generally resolved within sixty days.
In sum, what trademark attorneys and their clients ought to keep in mind is that the recent situation with social networking site URL customizations is very similar to the process for obtaining URLs from domain name registars. As one Intellectual Property Group has suggested, "it’s much cheaper and easier to register all relevant URLs upfront than it is to try and stop the infringement after it occurs."43 If infringement does occur, there are options but it is less costly and time consuming to be pro-active in registering and monitoring marks. Furthermore, a brand owner’s options will be more or less limited depending on the strength of the mark in question. If anything, this problem of cybersquatting on social networking sites further highlights the benefits of federal registration with the USPTO. Brand owners should, therefore, seriously consider registering important marks with the USPTO if they haven’t already. Nevertheless, one thing is certain: trademark owners must be defensive as well as offensive when it comes to protecting their names on social media sites.
1 See Brad Stone, Facebook to Begin Mediating Intractable Web Name Disputes, N.Y. Times, June 12, 2009.
2 Facebook Usernames, facebook, June 9.
3 See Jenna Wortham, Report from the Facebook Land Rush, N.Y. Times, June 13.
4 See Facebook Usernames, supra note 2.
5 Louis Altman & Malla Pollack, Callman on Unfair Competition, Trademarks and Monopolies § 22:15 (4th ed. 2009).
6 See Brad Stone, Facebook to Begin Mediating Intractable Web Name Disputes, N.Y. Times, June 12, 2009.
7 See Wortham, supra note 3.
8 See Altman & Pollack, supra note 5.
9 Georgette H, Tarnow, www.yourname.com: How Useful is the Uniform Domain Name Dispute Resolution Policy ("UDRP") in Protecting Personal Names from Cybersquatters?, 22 J. Marshall J. of Computer & Info. L. 535, 536 (2004).
10 See P. Mockapetris, Domain Names – Implementation and Specification, Network Working Group, November 1987.
13 List of Top-Level Domains, Internet Corporation for Assigned names and Numbers, May 15, 2009.
14 See Mockapetris, supra note 10.
15 Daniel A. Tysver, Domain Name Disputes, BitLaw, 2008.
16 Kent D. Stuckey, Internet and online law, Trademark and Unfair Competition Issues § 7.07 (2009).
17 See Tysyer, supra note 15.
19 Internet Corporation for Assigned names and Numbers, Domain Name Dispute Resolution Policies, May 15.
20 Altman & Pollack, supra note 5.
21 See Stuckey, supra note 16.
22 E.g. http://www.assetize.com.
23 Facebook Usernames, facebook, June 9, 2009.
24 Brad Stone, Keeping a True Identity Becomes a Battle Online, N.Y. Times, June 17, 2009.
25 See http://www.facebook.com/index.php?lh=f54144d79ef 908a5326b86da61480431&, https://twitter.com/signup, http://
signups.myspace.com/index.cfm?fuseaction=signup (requiring new users to only need name, email, and birthday to create new accounts).
26 True Identity, supra note 24.
27 Facebook Usernames Coming Soon for Pages, facebook, June 9, 2009.
28 See Usernames: General Information, Facebook Help Center (last visited Jue 26, 2009) ("We’ve taken steps to limit this behavior. Only those who created accounts before username availability was publicly announced at 3 p.m. on June 9, 2009 will be eligible. This decision was made to prevent people from creating new accounts just to take advantage of reserving a username. We’ve also reserved certain names that have been brought to our attention in an effort to help third parties protect their intellectual property and other rights. We also have a strict no transferability policy.").
30 Facebook Help Center, Usernames: Intellectual Property Rights Holders, (last visited on June 25, 2009).
31 David A. Westenberg, What’s in a Name? Establishing and Maintaining Trademark and Service Mark Rights, 42 Bus. Law. 65, 70 (1986).
32 See, e.g., Altman & Pollack, supra note 3, at 1 (discussing cybersquatting of domain names like "deltaairlines.com," "crateandbarrel.com" and "neiman-marcus.com" in Intermatic Inc. v. Toeppen, 947 F.Supp. 1227 (N.D. Ill. 1996)).
33 MarkMonitor’s annual Brandjacking Index Report.
34 See Press Release, World Intellectual Property Organization, Record Number of Cybersquatting Cases in 2008, WIPO Proposes Paperless UDRP (Mar. 16, 2009).
35 See True Identity, supra note 24 (quoting Howard H. Weller, a trademark lawyer at Mitchell Silberberg & Knupp in New York).
36 See generally Christopher Heng, How to Register Your Own Domain Name, (last visited June 26, 2009) (listing domain name registrars and their corresponding price schemes).
37 See, e.g., Robert L. Mitchell, 7 Ways to Protect Your Brand from Cybersquatters, Computerworld: Networking & Internet (June 25, 2009) (discussing monitoring services from companies like Cyveillance Inc. that alert trademark owners when potentially infringing domain names are registered).
38 See www.google.com/alerts; www.domaintools.com/mark-alert.
39 See http://www.ipconstituency.org/.
40 See Altman & Pollack, supra note 3, at 10; see, e.g., Nissan Motor Co. Ltd v. Nissan Computer Corp, 204 F.R.D. 460 (C.D. Cal. 2001), aff’d in part and in this respect, rev’d in part on other grounds, 378 F.3d 1002 (9th Cir. 2004), cert. denied, 2005 U.S.L.W. 873581 (U.S. 2005).
41 Facebook has even released a statement confirming that "by selecting a username, people now will be able to reflect their identity in the Web address for their user profile or for Facebook Pages by having a memorable URL rather than one with randomly assigned numbers." Posting of Blaise DiPersia to Facebook Developers (June 9, 2009, 15:17 EST).
42 Jeri Clausing, Hundres of Net Disputes in International Mediation, N.Y. Times (Feb. 24, 2000) (quoting A..Michael Froomkin, a University of Miami Law professor and a director of the WIPO dispute-resolution centers, who participated in drafting the proposal that led to the UDRP).
43 Tom Spalding, Firms: Join Facebook to Protect Trademarks, Indystar.com (June 17, 2009).
Aura Lichtenberg was raised in Naperville, and graduated from the Illinois Mathematics and Science Academy in 2003. She proceeded to the University of Illinois at Urbana-Champaign, graduating in 2006 with a B.S. in journalism with concentration in political science. Aura worked for a year and a half at Codilis & Associates, P.C. until August of 2008 and is currently a second-year law student at Chicago-Kent College of Law. She spent the summer as an intern at the 18th Judicial Circuit Court of DuPage County and legal volunteer in Israel.
Melissa Solomon is currently a second-year law student at the University of Pennsylvania Law School, where she is the Vice President of the Penn Law Intellectual Property Group and a Morgan Lewis & Bockius Book Scholar award recipient. Melissa graduated from Northwestern University in 2008 with a degree in Communication Studies and Legal Studies, winning the Departmental Excellence Award in Communication Studies. Before starting law school, she worked as a legal intern at New York’s Lipsig, Shapey, Manus & Moverman, P.C.. This summer, Melissa participated in the ABA Section of Litigation Judicial Intern Opportunity Program, working at the 18th Judicial Circuit Court of DuPage County.