The story of people registering domain names, user names, screen names and other internet names confusing with famous trademarks of others is as old as the internet itself.
Historically, ISPs and website operators had done very little to address rights and lawful interests of trademark owners, which resulted in massive litigation costs for the first plaintiffs who needed to reclaim their stake in .COM domain names.
In 1999, ICANN implemented the Uniform Dispute Resolution Policy that gave trademark owners a time- and cost- efficient way to deal with straightforward cases of cybersquatting. UDRP policy and rules, along with supplemental rules of several UDRP providers, such as WIPO and NAF, are sophisticated documents detailing various aspects of substance and procedure.
It may be hard to believe today but Twitter has only been around since 2006. With its revolutionary format, Twitter has now become the platform that allows over 500 million registered users to exchange over 340 million messages a day.
No wonder that it attracted those who wanted to capitalize on somebody else’s goodwill! With the prevalence of Twitter on the web, it was only a matter of time before a trademark owner would find itself unable to register a Twitter handle corresponding with its trademark.
In result, Twitter came up with its Trademark Policy to address such disputes.
Unlike UDRP, Twitter trademark policy is very brief and leaves a lot of discretion to Twitter. The gist of the policy is that if Twitter receives a “report of trademark policy violations from holders of federal or international trademark registrations”, Twitter will review the account and if Twitter finds that there is a clear intent to mislead others or if the account is in fact misleading, then Twitter may suspend the account and release the username for the trademark holder’s active use.
The policy clarifies that Twitter users should not use someone else’s trademarks as usernames, profile names, profile photos, header photos, background images, or otherwise create an association between their Twitter pages and comments and such trademarks. For fan pages, Twitter users are required to include a statement to distinguish their Twitter profile from the real company by adding a disclaimer in the 160-character bio, such as “Unofficial Account”, “Fan Account”, “Not affiliated with…”
The procedure for reporting trademark policy violations is very simple: the interested party must provide the following information: username of the reported account, the trademark owner’s company name, the trademark owner’s twitter account (if there is one), the trademark owner’s website, the trademark, trademark registration number and country of trademark registration.
Interestingly, trademark policy violations can only be sent from an email address of the company owning the trademark. For example, if Apple wanted to reclaim the @ipad username, the trademark policy violation request must have been sent from an firstname.lastname@example.org. In other words, if Apple wanted to have a lawyer submit the report, Apple would need to set the lawyer with an @apple.com email first.
Unlike the courts and UDRP, Twitter primarily deals with registered trademarks, not common law trademarks. UDRP specifically states that it applies to complainants who have “rights” in a trademark. Twitter trademark policy is a serious limitation to those trademark owners who rely on their unregistered trademarks. Although the policy makes it clear that “a federal or international trademark registration is required”, Twitter makes an exception for unregistered trademarks held by government agencies and non-profit organizations.
The trademark owner must describe confusion that is being created by unauthorized use of the trademark by the twitter handle.
Finally, the trademark owner should choose whether it desires to remove the violating account or transfer the trademarked username to the trademark owner. These two options are in line with UDRP, where the trademark owner may request cancellation of a domain name registration or its transfer to the trademark owner.
Interestingly, the format of the complaint is that of a “trademark policy violation”, not “trademark infringement” as such. This is done in the attempt to shield Twitter from having to resolve each and every dispute between trademark owners and twitter users.
Currently, Twitter usernames are less important for branding compared to domain names, which is probably the reason why there have not been very many court cases and serious disputes around Twitter user names. Time will tell if this is going to change.
Meanwhile, if you are a trademark owner, make sure you use Twitter internal policy if you see someone else use your trademark on their twitter profile.
If you are a Twitter user, make sure you don’t infringe upon trademark rights of others. Remember that just because Twitter has a policy that facilitates the transfer of usernames to trademark owners, does not mean that you cannot be sued for trademark infringement personally.
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