Facebook and Reserved Usernames:The Next Cyber-Land Rush?

On June 9, 2009, Facebook, Inc., the popular social networking website company, announced that as of one minute past midnight tonight (EDT), existing users will be allowed to register “vanity” URLs- essentially Facebook web addresses customized with the username of their choice- such as “http://www.facebook.com/domainlegalcounsel”. In order to obtain a vanity name, the Facebook page holder must have at least 1,000 fans as of the end of May 2009 and the user name must be at least five alphanumeric characters in length. This is apparently being allowed so that it will be easier for people to find Facebook user profiles and may also be used as a tool for putting a personalized Facebook URL on business cards, in emails or attached to other useful marketing materials.

With more than 200 million active users, this certainly has the potential for trademark mischief. To their credit, Facebook has attempted to put into place some preventative measures to protect trademark owners against “name-squatting” violations. For one thing, these usernames cannot be sold. Trademark holders who want to protect their marks from being claimed by others may enroll their trademarks with Facebook by using the form found at http://www.facebook.com/help/contact.php?show_form=username_rights. Facebook has also provided a manner in which trademark holders may report potential infringement by filling out the form available at http://www.facebook.com/copyright.php?noncopyright_notice=1. Facebook has reserved the right to remove or reclaim any username at any time for any reason. At the moment it is unclear whether the trademark protection mechanism Facebook has put into place requires a trademark holder to provide a registered trademark. If it does, those with common law trademark rights may find themselves out of luck.

Also, since this service is being allowed on a “first come, first served” basis, it will be interesting to see how conflicts between mark holders with similar names in different markets or individuals with the same name as a celebrity will shake out. Given that the use of usernames on Twitter has brought great attention as of late with parallels drawn to disputed domain name purchases of a decade ago, we’ll look forward to seeing how the phenomena of reserving unique identifiers in the world of social media will play out. Stay tuned…

Should Domain Names Be Regarded as Property?

This appears to be the $64,000 question of the moment. There is no doubt that domain names are valuable assets. In some respects, domain names may be even more valuable than trademarks. Not only may a domain name identify the source of goods or services, it can also identify the location (virtual, of course) of the source as well. Just last year, the domain name was sold for nearly $10,000,000.00. Well, the actual cash amount of the sale was $9,999,950.00. No chump change that.

There are those who have analogized domain names, comprised of a series of letters and numbers, to street addresses, telephone numbers and even stock exchange ticker symbols. They argue that domain names are simply a mnemonic aid and nothing more than a right in a service contract.

On the other hand, there are those who argue that domain names are property. Parties go to court and before administrative bodies to obtain them. Courts and administrative bodies order domain names be transferred from one party to another. Additionally, the “Anticybersquatting Consumer Protection Act” (ACPA) passed by Congress a decade ago contains jurisdictional provisions authorizing an in rem civil action against a domain name which suggests that it is property. Typically, an in rem action is brought to determine the status of particular property.

However, other statutes and case law are unclear on this issue thus far. For instance, courts in California have recognized a property right in domain names, but Virginia has declared them to be a contractual right. One of the most ballyhooed cases dealing with the issue of property rights in domain names was the 2003 case involving . In that case, Kremen v. Cohen, the Ninth Circuit Court held that a domain name is a form of intangible property which can support a California state law claim for the tort of conversion. The Court opined that a domain name represents an interest of precise definition, is subject to exclusive possession or control and a registrant has a legitimate claim to exclusivity. On the other end of the spectrum, however, is a New York Appellate Court that ruled that a domain name is not property unless it is registered as a trademark.

The one group you would assume would have a clear position on this issue would be domainers. However, this is not entirely true. There is presently a pending case in Kentucky which will be the focus of my next blog post. This particular case illustrates pretty clearly “the good and the bad” associated with a determination as to property rights in domain names…



P.S. My intent to publish blog posts on a daily basis was a bit ambitious. Weekly blog posts are probably more realistic starting out...

Deb

Potential Expansion of Domain Name Extensions

ICANN has approved a program to provide a broad expansion of domain name extensions. The draft policy documents were open for public comment through December 2008.

Presently, twenty one generic top level domain extensions (gTLDs) exist. The most commonly used extensions (.com, .edu, .gov, .int, .mil, .net, and .org) were created in the 1980s and are now managed by the Internet Corporation of Assigned Names and Numbers (ICANN). In the years, following the creation of the original gTLD extensions, a number of others have followed (including .biz, .info, .name, .pro, .aero, .coop, .museum, asia, .cat, .jobs, .mobi, .tel and .travel).

As a general rule, most gTLD extensions are primarily comprised of three or more letters. Country Code Top Level Domains (ccTLDs) are comprised of two letters and exist for more than 240 different countries and territories. For example, <.us> is the country code for the United States. The current list of all Top Level Domains is maintained by IANA (Internet Assigned Numbers Authority) and can be found at http://www.iana.org/domains/root/db/

ICANN has now proposed a plan to allow a potentially unlimited expansion of domain name extensions. Under the plan, entities can apply to operate a registry for a gTLD extension consisting of almost any string of letters for any product, brand or even geographic location. Think .pizza, .tropicana, .boston. ICANN has even gone so far as to advertise its plan in The Economist, as was recently mentioned in Domain Name Newswire.

So what’s not to like with regard to such a massive domain naming system? Well, not everyone appears to be on board with the plan to expand Top Level Domains. Some big companies such as Microsoft and Time Warner among others, have objected because of trademark concerns. (If you are interested, all comments made with regard to the draft proposal can be found here.) Others have argued that allowing such an expansion will decrease the portfolio value of domainers. Even the Commerce Department, which provides oversight to ICANN, has expressed reservations about the plan, requesting that further economic studies be completed before consideration of implementation.

No doubt, if the expansion program is implemented during the second half of 2009 as planned, it will present new challenges and opportunities for trademark holders and domainers alike.

Back again

Been away for a while but I am back again.

Beginning this afternoon, I will try to post on a daily basis during the work week. In the meantime, check out my "new" website at http://www.domainlegalcounsel.com/. (Thanks LAH!)
Deborah A. Logan