Cybersquatting, the practice of buying up domain names that are identical or confusingly similar to trademarks in order to sell them to the trademark owner for a hefty profit, can be dealt with under the Lanham Act 43(d) (15 U.S.C. § 1125(d) or Anticybersquatting Consumer Protection Act (ACPA)) or under the Uniform Domain-Name Dispute-Resolution Procedure (UDRP). The latter is a system set up by the Internet Corporation for Assigned Names and Numbers (ICANN) as a more expedient way to deal with cybersquatting than going to court under ACPA, and it can lead to the cancellation or transfer of a domain name. Anyone registering a domain name agrees to UDRP as part of their registration. The language of the ACPA and the UDRP are somewhat different, but both require the plaintiff (or complainant in the language of the UDRP) to show bad faith on the part of the defendant (or respondent) and that the domain name is at least confusingly similar to trademark. A lot of the time, this last prong is easily met, and some of the most famous cases include bbcnews.com and madonna.com. (Here’s a list of ten more or less representative cases.) Thus trademark law and the UDRP provide protection for bad faith uses of celebrities’ and companies’ trademarks in the arena of domain names, an arena which was did not fit neatly into any of the causes of actions under traditional (and dilution) trademark regimes.
On the other hand, celebrities and companies have sometimes attempted to use the ACPA and the UDRP to quash sites criticizing them, so called gripe sites (or sucks.com sites). One famous example involves the site fallwell.com (yes, with two l’s), which was a site dedicated to criticizing the anti-gay teachings of Rev. Jerry Falwell, and which was sued by Falwell’s estate under the ACPA and other federal and state claims. The Fourth Circuit reversed the lower court’s injunction, holding that barring some evidence of bad faith intent to profit from the domain name, “the use of a mark in a domain name for a gripe site criticizing the markholder does not constitute cybersquatting.” Lamparello v. Falwell, 420 F.3d 309, 322 (4th Cir. 2005). Similarly, the UDRP warns about overzealous markholders by charging its administrative panels to look out for “reverse domain name hijacking,” i.e. the use of the UDRP “in bad faith to attempt to deprive a registered domain-name holder of a domain name.” UDRP 1 “Definitions”.
Although there are a number of situations online that resemble the trademark-domain name conundrum, such as Twitter handles or Facebook names, both the ACPA and the UDRP specifically applies only to domain names (the ACPA by statute and the UDRP by contract). So what is to be done when a company or celebrity complains to Twitter that a user is using a handle confusingly similar to their mark for something of which they do not approve?
Meet Chase Giunta, a 25-year-old graphic designer from Dallas, who retweeted Chase Bank customer complaints under the handle @chase. According to a number of news reports (e.g. Dallas Observer, Fox Business News and New York Post), although Mr. Giunta owned his handle for several years, he only begun retweeting complaints after he received a “crazy amount of mentions” every day from disgruntled bank customers (see Mr. Giunta’s October 8 comment responding to OakParkStudio below the Dallas Observer article). Mr. Giunta doctored an avatar picture in the same blue as on the Chase Bank logo with the words “Chase Retweets” in black over it to accompany his profile, which included the disclaimer “This account is no way [sic] affiliated with Chase Bank or J.P. Morgan.”
Just as courts generally frown upon using the Anticybersquatting Consumer Protection Act to shield companies or celebrities from criticism, so does Twitter’s policy on username squatting seem unfit to deal with Mr. Giunta’s situation. The Twitter Rules contain a list of considerations in cases of username squatting that fairly closely mirrors the considerations of the ACPA and the UDRP, and are essentially aimed at preventing people from trading usernames or in other ways use them in bad faith. However, although username squatting is prohibited, as per the username squatting policy, Twitter “will not release inactive or squatted usernames except in cases of trademark infringement.” Twitter’s response to issues of trademark infringement is two-tiered: 1, “[w]hen there is a clear intent to mislead others through the unauthorized use of a trademark, Twitter will suspend the account and notify the account holder;” 2, “[w]hen [Twitter] determine[s] that an account appears to be confusing users, but is not purposefully passing itself off as the trademarked good or service, [they] give the account holder an opportunity to clear up any potential confusion.” It seems that Mr. Giunta could potentially fall into the second tier, but according to him, he never got the chance to clear up any potential confusion since Twitter never contacted him about it (see Mr. Giunta’s October 8 comment responding to ScottsMerkin under the Dallas Observer article, but see the September 7 New York Post article: “Twitter reps reached out to Giunta… and offered him an opportunity to comply with Twitter’s policy before stripping him of the @Chase user handle, according to a person close to the Twitter”). In the end, Twitter justified taking away @chase from Mr. Giunta because they claimed that the avatar picture infringed JPMorgan’s copyright (a dubious claim at best) and that Mr. Giunta violated the Twitter policy on parody since his account name lacked “some other distinguishing word, such as ‘not,’ ‘fake,’ or ‘fan’.” According to Mr. Giunta, however, “I was singled out so Twitter could play into the hands of what JP Morgan wanted.” And there does not seem to be much he can do to get his handle back.
To conclude, although it seems that Twitter’s policy fairly closely mirrors that of the ACPA and the UDRP, which makes sense as the system of Twitter handles fairly closely mirrors that of domain names, there is one important difference: court decisions and decisions by the UDRP administrative panels can be appealed, whereas there seems to be little room for appeal under Twitter’s user policy. Furthermore, since users agree to Twitter’s policy by using Twitter, Twitter is practically only bound by market forces when determining whether or not to release a handle or transfer it to someone else. Although widespread reverse username hijacking will most likely not be an issue because of Twitter’s strong first amendment ideals, it is certainly not impossible that Mr. Giunta will be followed by other early adopters of Twitter in having his handle transferred to a wealthy, global corporation.
Christoffer Strömstedt is a J.D. candidate, ’15, at the NYU School of Law.