• Facebook Secondary Domain Registration
  • June 24, 2009
  • Law Firm: Holland & Hart LLP - Denver Office
  • In just a few days, trademark owners will have a new, potentially powerful online forum to spread their brand… and to defend. As of 10:01 pm, Friday June 12 Facebook will begin allowing users to register Facebook user names on a first-come, first-served basis at http://www.facebook.com/username/. This is important because Facebook will tie these usernames to vanity URLs that will include the username in the top level domain address. So, for example, were I to register CocaCola as a username, my new Facebook page address would be www.facebook.com/CocaCola.

    Given how ubiquitous and pervasive Facebook has become, the right username and vanity URL has the potential to very quickly become prime virtual real-estate—both for owners of famous marks and for those with less noble intent.

    Facebook is offering something unusual in the social networking world: a simple, easy-to-use mechanism for trademark protection. Rights owners can simply fill out their company name, title, email, trademark, and registration number at http://www.facebook.com/help/contact.php?show_form=username_rights to block registration of an infringing username. Although the last field suggests that only registered marks are eligible, it is advisable that holders of trademark applications in process simply enter the serial number instead.

    Additionally, Facebook is attempting to reduce a sudden land rush for famous marks by a new breed of “squatters” by implementing a phased registration process. Only persons that had registered their username prior to June 9, 2009 will have the ability to claim their username in the first phase. New username registrations won't be eligible until Sunday, June 28, 2009. One purpose of this "land rush" mechanism is to allow trademark owners a reasonable time in which to reserve their trademarks.

    So, you may be asking: why is this a concern for my mark? Well, secondary domain squatting is on the rise. From forums like Twitter to public blogs, there is a growing trend around the web to use famous marks for illegitimate purposes.

    Most social networking sites have policies in place to address this, for example, Facebook offers a “Notice of Intellectual Property Infringement (Non-Copyright Claim)" form at http://www.facebook.com/copyright.php?noncopyright_notice=1, but Facebook doesn't describe the procedure it follows once it receives these forms or any guarantees that it will take the required action. As in most things, remediation always requires much more time, expense and effort than prevention. As such, a few minutes spent now “blocking” your mark can save a lot of headaches later.

    Finally, a few minutes spent blocking registration now mitigates the risk that someone else can beat you to the punch, either maliciously, mischievously or otherwise, and fill out the "Preventing the Registration of a Username" form before you and block you from using your own mark as a user name.