Academic

Face(book)ing the New Cybersquatters

By Jacqueline Lipton

This morning, the National Law Journal noted:

"Starting Saturday, at 12:01 a.m. EST, Facebook will allow an estimated 200 million users to select any "usernames," which can include a trademark, brand name or personal name. And if the owner hasn't registered the trademark first with Facebook, it's up for grabs.

Lawyers note that while the new usernames will be a good marketing tool for companies to promote their products on Facebook and direct users to their Web sites, cybersquatters could snatch the trademark first and exploit it."

This is reminiscent of what happened in the late 1990s when cybersquatters started buying up domain names corresponding with trademarks and famous names, a practice that continues to this day.  Although Facebook says it will implement an inhouse grievance procedure for situations involving trademark holders complaining about unauthorized use of their marks in Facebook usernames, it may not know what it's letting itself in for if ICANN's experience is anything to go by.  Facebook has also set up a system for registered trademark holders to lodge an electronic notice with Facebook to prevent the use of their trademarks in Facebook usernames.

It is not 100% clear how this will work as the electronic form appears to contemplate that only registered marks can be protected in this way, which suggests that unregistered marks and personal names will not be entitled to protection under this mechanism.  Additionally, it is not immediately clear whether the form only applies to marks registered in the United States, or also contemplates marks registered in other countries.  Further, there is no clear statement as to what variations of a mark will not be permitted in Facebook usernames.  For example, if Nike put in a notice to prevent the use of its trademark in a Facebook username, would facebook guarantee that its users would not use variations of the mark like "facebook.com/nikesucks" or "facebook.com/nyke"?  And what of situations where more than one company holds the same trademark in a different market?  What happens if Delta Faucets lodges a notice to prevent anyone from using "facebook.com/delta"?  Would this preclude Delta Airlines from using the username? 

In any event, Facebook is urging trademark holders to preemptively protect their marks in this way (or through preemptive registration themselves) before cybersquatters sign up for them.  Let's hope Facebook has the manpower/serverpower to cope with the deluge of requests it gets on Saturday...

Full post as published by The Faculty Lounge on June 12, 2009 (boomark / email).