Brandsquatting and your trade mark

I’ve just been listening to an interesting discussion in a recent episode of This Week in Law about the implications of brandsquatting on services like Twitter, FriendFeed and Facebook. You may be familiar with cybersquatting which occurs when a person registers a domain that person has no legitimate interest in and has registered largely for the purpose of re-selling it, typically to a trade mark owner, for a profit.

Cybersquatting is usually dealt with in terms of dispute resolution processes established in respect of those particular namespaces (ICANN’s UDRP for .com, .org, .net and other top level domains and the .zaDNA’s own dispute resolution process for the .za namespace). These dispute resolution processes are designed to be more informal than court proceedings and can be both more efficient and effective.

When it comes to brandsquatting the rules are a little different. You’re no longer dealing with domain name registrations per se but rather the use of a folder on an existing domain, for example http://twitter.com/cocacola, which matches an existing brand or person’s name.

Users who register accounts on services like Twitter, FriendFeed and Facebook and who claim usernames that are similar to or the same as existing brands or personalities may be doing so to leverage off the existing brand or personality to boost traffic, attention or even to harm that brand. These cases don’t fall under the scope of the UDRP or zaDNA’s ADR process and instead fall under the individual service’s terms of service and possibly the relevant trade mark law. Fans often create accounts in the name of their favourite brands with the intention of creating fan-sites of a sort and the question then becomes whether to permit this use of a brand or shut down all unauthorised uses of the brand. The Coca-Cola page on Facebook was, if I remember correctly, created by two Coca-Cola fanatics and not by the Coca-Cola Company. The company agreed to let the group continue, presumably because of its overwhelmingly positive benefit for the brand.

On the other hand the Coca-Cola page on FriendFeed doesn’t seem to be associated with the company itself or have much in the way of content about the brand. It is a relatively innocuous abuse of the brand but an abuse nonetheless.

The legal problems with these sorts of registrations include passing off which is when a person or service passes themselves off as an existing and often well established brand. This is a basis of unlawful competition as well as trade mark infringement in many legal systems, including in South Africa.

While remedies may include approaching a court to stop the passing off, this is an expensive and often time consuming process. Fortunately Twitter, Facebook and other services have provisions in their terms of use to deal with this (or they police this in the ordinary course of their business). Twitter, for example, specifically deals with this issue in its terms of service:

We reserve the right to reclaim usernames on behalf of businesses or individuals that hold legal claim or trademark on those usernames.

Facebook also has a few provisions dealing with brandsquatting. These provisions prohibit misleading account registrations or account registrations in other parties’ names without consent. The Facebook Statement of Rights and Responsibilities also enable Facebook to terminate accounts for certain infringements of intellectual property.

FriendFeed’s terms don’t appear to address this issue explicitly but I have seen instances where FriendFeed staff act fairly decisively to address abuse of their system so brandsquatters shouldn’t be too cavalier here either.

The point is brandsquatting is not tolerated either. The remedies may not be quite the same as those available for more conventional cybersquatting but remedies do exist. The only question is how readily the services concerned will take action against brandsquatters when these illicit activities are brought to their attention. Hopefully the action will be swift and decisive. If not, well, there are always the courts …

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