Facebook launches new trade mark protection mechanism for members’ usernames

 

Since last Saturday (14 June), users of the popular social networking site have been able to to customise the URL of their profile pages, making them more distinctive and easier to remember.

Aliases were allocated on a first-come, first-served basis, which sparked a ‘land rush’ to claim the most popular names.  Most common firstnames and surnames were claimed within minutes, leaving many disappointed at having to settle for ‘facebook.com/john.smith5549’.

However, the launch was a clear success for trade mark owners, with Facebook taking an innovative approach to preventing ‘namesquatting’.

How does the username scheme work?

The basic mechanism works as follows:

  1. By completing an online form, a rights holder (or their representative) can notify Facebook of its rights to a registered trade mark, or complain about someone else’s use of a mark;
  2. Facebook pre-emptively blocks a dictionary of well-known business names and generic words from being registered;
  3. Usernames are only offered to members who joined Facebook before the custom URL plan was announced; and
  4. Usernames are non-transferrable, and Facebook reserves the right to remove and reclaim any username at any time for any reason.

The complaints-based mechanism is similar to the trade marks policy recently unveiled by Google.  Under this policy, the onus is on trade mark owners to notify Google of an infringing use of their mark, at which point the alleged infringer must satisfy Google that it has authorisation to use the mark in the relevant territory.

What should trade mark owners do?

So far, Facebook’s measures seem to be working. However, trade mark owners will need to act quickly to ensure that they are not left behind:

  • notify Facebook of the mark by completing the online form with details of your company name, registered trade mark and registration number;
  • if your company already has a Facebook account, you may wish to claim the relevant mark as the company’s username as soon as possbile; and
  • proactively monitor Facebook for any usernames that may infringe your trade mark, and requesting removal of any offending accounts using the online “Notice of Intellectual Property Infringement (Non-Copyright Claim) form available here

With the growing number of user-generated social-networking websites such as Facebook, MySpace and Twitter, online trade mark protection is becoming increasingly complicated by the myriad ways in which marks and identities may be misused. Facebook’s pre-emptive approach to protecting trade mark rights seems to strike a happy medium between certainty to rights holders and fairness to the wider public. However, whether it will provide an effective forum for resolving online squatting disputes remains to be seen.

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