On June 13, 2009, the social networking website, Facebook, Inc. began to allow users to personalize their URLs (web addresses) with a unique username (ie: facebook.com/username).
Previously, users were identified by a name and unique number. Users are now able to select one username for their personal profiles and administrators can select one username for each page that they operate.
This development has garnered a great deal of attention on the internet and in mainstream media over the past few days, and has raised concerns in many corners regarding the possibility of increased “username squatting”, along the same lines as the practice of “cybersquatting” or “name-jacking” domain names.
Cybersquatting: registering a domain name consisting of another person’s trade-mark, often for the purpose of selling the domain name to the trade-mark owner at a profit (eg: www.BRAND.ca). Trade-mark owners may be able to reclaim domains registered in bad faith through dispute resolution mechanisms (such as the CDRP for .ca domains and the UDRP for many other top level domains) or anti-cybersquatting legislation (such as ACPA in the United States).
Name-jacking: registering an individual’s name (often a celebrity or professional) as a domain name in order to profit from increased web traffic resulting from internet searches for that name (eg: www.JaneDoctor.ca). Such registrations are typically much more difficult to reclaim, as names are not usually trade-marks, and consequently are not covered by dispute resolution proceedings or legislation. Name-jacking does not include domain names legitimately registered by other users with the same name, in this case: first come first served!
This whole issue appears to be a bit of a tempest in a teapot. Myspace, Twitter and other social and professional networking websites already permit personalized usernames. So far, such practices don’t appear to have led to widespread abuses or infringement of third party trade-mark rights. However, in light of the amount of attention Facebook’s move has attracted, we thought we’d weigh in on the issue.
To their credit, it appears that Facebook is at least aware of the potential for username squatting and has taken steps to deter such conduct. Some of the restrictions Facebook has put in place include:
Only one username can be selected per personal profile. This prevents users from “claiming” multiple usernames per account, and so limits the scope for abuse.
Only users who had accounts as of June 9, 2009 (the date on which the announcement of personalized usernames was made) are currently eligible to register a personalized username. Those who registered after that date must wait until June 28, 2009. This temporarily prevents the registration of multiple new accounts to get around the “one username per account” rule.
Usernames are not transferable to other accounts and cannot be changed. This reduces the possibility of a user registering a trade-mark, celebrity name or other popular username, just for the purpose of selling it to the owner or the highest bidder.
Facebook can remove or reclaim any username at any time for any reason. This gives Facebook considerable discretion in reclaiming usernames which for whatever reason have become controversial.
In the few days prior to opening registration for usernames on June 13, 2009, Facebook allowed trade-mark owners to submit their trade-marks for inclusion on a list of “reserved” usernames unavailable for registration. This allows Facebook to refuse to allow the registration of certain trade-marks by users other than the owners.
These restrictions will definitely reduce the potential for widespread username squatting, but there are a number of outstanding issues.
- The trade-mark submission process appeared to be limited to registered trade-marks, and it was unclear whether Canadian trade-mark registrations (and other trade-mark registrations outside of the U.S.) would be accepted for inclusion on the list, or who would be entitled to register the trade-mark as a username if the same trade-mark was owned by different entities in different jurisdictions.
- Now that the initial registration period for usernames has opened, Facebook has closed the trade-mark submission process. This limits the ability of trade-mark owners to proactively protect their marks. Trade-mark owners who did not submit all of their trade-marks to the “reserved” list will still be able to register one trade-mark per account as a username, provided they have an account with Facebook, but other existing or future trade-marks will not be able to be reserved.
- Unlike under the trade-mark submission process, trade-mark owners without Facebook accounts will now have no way to prevent the registration of their trade-marks as usernames. It is unclear whether trade-marks currently on the “reserved” list will be removed from the list if the owners do not register them as user names (for instance, because they do not have Facebook accounts or because they have more than one trade-mark).
- It is not clear whether Official Marks (those marks adopted and used by a University or public authority which have been advertised under Section 9 of the Trade-Mark Act) will be afforded any protection from being registered as usernames on non-commercial Facebook pages. Section 9 prohibits the adoption of Official Marks “in connection with a business, as a trade-mark or otherwise”.
Consequently, although Facebook has taken steps to minimize the incentives for username squatting, the potential for abuse still exists, just as it does throughout the internet. While Canadian trade-mark rights will continue to apply to trade-marks used in Canada, jurisdictional issues and conditions of use may mean that such rights are not enforceable against some uses or abuses of Canadian trade-marks (whether as Facebook usernames or otherwise). For instance, the owner of the Canadian trade-mark UNIVERSITYBRAND may have no recourse under Canadian trade-mark law against a Facebook user living in Australia who has chosen UNIVERSITYBRAND as a username for a page dedicated to Australian alumni of that university (or some other, less legitimate purpose), or against an American university which holds a U.S. trade-mark for UNIVERSITYBRAND.
Although the window for reserving trade-marked usernames on Facebook has passed, trade-mark owners who are Facebook users or page administrators can, depending on availability, register one trade-mark per page as a username in order to prevent the username from being registered by a third party – a move which could prevent a lot of headaches in the long run.
Trade-mark owners who feel that their trade-mark or Official Mark is being infringed through use as a username on Facebook can report the infringement to Facebook by filing a Notice of Intellectual Property Infringement. Please feel free to contact Tasha Coulter or any other member of our Technology & Intellectual Property Group for more information.
