By: Alexis George

Today’s world is one in which social media is very widely used and undoubtedly intertwined with daily life. One result of this new reality is the prevalence of legal issues stemming from social media use. Cyberbullying is one of the most notable examples of what can go wrong when so many people use social media to communicate their ideas and emotions and interact with others. Nevertheless, another legal issue that plagues many social media platforms is cybersquatting. Cybersquatting is the practice of intentionally registering a domain name or username using a small variation on a celebrity’s or trademark’s name in order to mislead users and gain exposure and popularity, what is sometimes called a “social media presence”.[1]

In a marginal number of cases, cybersquatting can actually be unintentional and the result of coincidence. For example, in one case, Carnival Cruise Lines ended up bargaining with a Virginia teenager who without any malice toward the company, was coincidentally using the Snapchat handle @CarnivalCruise.[2] Interestingly enough, the company ultimately got the teenager to agree to give them the username in exchange for a luxury trip to Barcelona.[3]

Nevertheless, many instances of cybersquatting are the result of an intentional misrepresentation on the part of someone who decides to register a domain or username in the hopes of getting the trademark owner or a celebrity of the same name to pay them in order to take over the name. As time goes on and social media use becomes more prevalent, the issue continues to become more widespread. According to the World Intellectual Property Organization (WIPO), cases of cybersquatting have been growing exponentially over the past few decades.[4]

Cybersquatting often affects many different people and entities, but most commonly celebrities, brands, and companies. For example, in 2009 Jennifer Lopez filed and won a lawsuit against a website called “JenniferLopez.biz” and “JenniferLopez.org” that was posting indecent photos and videos about her as well as fake news stories.[5]Another notable example is in the case of Microsoft, which had to defend its trademark against a teenager named Mike Rowe who registered a website called “MikeRoweSoft.com”.[6] In this instance the WIPO actually had to get involved issuing a cease and desist order to Rowe, and Microsoft itself actually suffered some negative publicity as a result of trying to protect its trademark so aggressively.[7]

The Anticybersquatting Consumer Protection Act was enacted through Congress in 1999,[8] with it trademark owners were given a remedy to address issues such as registering, trafficking or using a domain name confusingly similar to a registered trademark.[9] The purpose of the law was to prevent cybersquatters from being able to register internet domain names that contain trademarks with no intention of creating a legitimate website but rather to try to later sell the name to the actual trademark owner or a third party.[10] There are two requirements a trademark owner must meet to bring a cause of action against an alleged cybersquatters. First, they must show that the cybersquatters had a bad faith intent to profit from the mark, and secondly, they must show that the cybersquatters has registered, traffics in, or uses a name that is either an identical name to, or confusingly similar to, a distinctive, famous, or trademark protected mark.[11]

Cybersquatting has increasingly become a problem for many celebrities, entertainers, and companies. Cybersquatting of usernames and domain names is usually the result of malicious intentions on the part of the cybersquatters to try to impersonate these individuals or organizations, or make a profit off of them by forcing them to buy the names and websites created by the fraudsters in order to protect their brands. Nevertheless, legislation like the Anticybersquatting Consumer Protection Act has helped combat this little known but interesting practice.

 

[1]See Moeller, Cybersquatting and Intellectual Property Protection, Moeller IP Advisors Blog(May 18, 2017), https://www.moellerip.com/cybersquatting-and-intellectual-property-protection/.

[2]See Mark Molloy, How ‘username squatting’ became a digital real estate nightmare for brands and celebrities, The Telegraph(Mar. 30, 2018), https://www.telegraph.co.uk/technology/2018/03/30/username-squatting-became-digital-real-estate-nightmare-brands/.

[3]See id.

[4]See Moeller, Cybersquatting and Intellectual Property Protection, Moeller IP Advisors Blog(May 18, 2017), https://www.moellerip.com/cybersquatting-and-intellectual-property-protection/.

[5]See Cybersquatting Examples: Everything You Need to Know, UpCounsel.com, https://www.upcounsel.com/cybersquatting-examples (last visited Mar. 4, 2019).

[6]See id.

[7]See id.

[8]See S. Rep. No. 106-140, at 29 (1999).

[9]See Cybersquatting, intellectual-property.legalhelp.org, http://intellectual-property.legalhelp.org/domain-names/cybersquatting/ (last visited Mar. 5, 2019).

[10]See id.

[11]See id.

Image Source: https://blog.marcaria.com/2016/08/12/what-is-cybersquatting/