On June 13 Facebook started offering its users the ability to register usernames consisting of vanity URL’s (e.g., www.facebook.com/yourname). In the week preceding, with little fanfare, Facebook allowed the owners of federally registered trademarks to complete an online form preventing registration of usernames containing their marks. Although the submission period is now closed, Facebook does provide another form (click here) for trademark owners to complain about unauthorized persons who register usernames containing their marks or who otherwise infringe their intellectual property rights.
The great username rush on Facebook highlights a critical problem for trademark owners: what to do about “name squatters” who register usernames on Facebook, Twitter and other social networking websites containing third parties’ trademarks? This behavior is sometimes innocuous (for example, the registrant may be a fan of the trademark owner), sometimes annoying (e.g., a prankster uses a corporate username to make snarky comments critical of the company) and sometimes downright dangerous (e.g., a fraudster impersonates a bank in a phishing scheme intended to obtain sensitive customer information). In their terms of use Facebook and Twitter reserve the right to reclaim usernames, and thus filing a complaint and working with the social networking sites to effectuate a transfer or cancellation of the username is probably a trademark owner’s first and best line of attack against a name squatter (obviously, if the trademark owner gets there first and registers the username itself, that is the most preferable outcome).
With regard to trademark law remedies, the landscape is eerily similar to that which existed in the late 1990’s, when cybersquatting (the bad-faith registration of domain names containing or confusingly similar to others’ trademarks) was rampant, but shoehorning a case into the existing trademark causes of action for infringement and false designation of origin was difficult. As we intellectual property lawyers know, Congress solved that problem in 1999 by passing the Anti-Cybersquatting Consumer Protection Act (15 U.S.C. Sec. 1125(d)). The problem here is that cybersquatting as prohibited in that statute is defined as the registration or use of, or trafficking in, a “domain name” with a bad-faith intent to profit. One could argue, of course. that inclusion of a third party’s trademark in a Facebook vanity URL constitutes registration of a domain name, but this seems dubious: an argument at least equally powerful can be made that the trademark is contained outside of the domain name.
Under the circumstances, the classic causes of action for trademark infringement (15 U.S.C. Sec. 1114) and false designation of origin (15 U.S.C. Sec. 1125(a): in a nutshell, this is using a word or term or making a false or misleading statement which is likely to cause confusion, deception or mistake about the sponsorship, affiliation, origin or approval of a person or its goods or services) are probably the trademark owner’s best bets. If the name squatter can be identified (increasingly a difficult task in the online world), the plaintiff can request the court to award treble damages and, in exceptional cases, attorneys’ fees. These remedies are mandatory if the court finds that the defendant intentionally used a counterfeit mark. However, the defendant’s activities must constitute use of the plaintiff’s mark in commerce and must be in a manner that is likely to confuse or deceive, or to cause mistake by, the public. Therefore, the fans and pranksters mentioned above are less likely to be liable, since they are not using the mark in connection with goods or services (other than referring to the trademark owner’s) and, in any event, are not likely to be confused with the trademark owner. On the other hand, a fraudster who impersonates the trademark owner to obtain money or information and a competitor who uses the owner’s mark in a username to attract traffic to a profile or page promoting its own goods or services is more likely to satisfy the statutory requirements. The first lawsuits have barely been filed, so it will take a year or two to see how all this shakes out — assuming Congress doesn’t act first by passing some sort of anti-social media squatting legislation.
As always, stay tuned ….