A matter of right?

The pandemic forced businesses to scale up their online presence, and rightly so. The Internet has the potential to boost a brand’s presence globally, and that is why small-scale companies and even established brands do not wish to quit the space. The Internet is so big, powerful, and resourceful that, for some people, it is a complete substitute for life. As a lawyer who has worked in the domain of brand protection, I often wonder, do we need specific guidelines for brand presence on various social media platforms? Should these guidelines be focussed only on how brands should adhere to the platform guidelines or also on empowering these brands to enforce their rights? With the rise in e-commerce and brands in cyberspace, they must take control of their digital assets before it gets too late.

While one can create ‘business accounts’ on platforms, an essential need is to use advanced tools to evict squatters who may be occupying the digital assets of brands on these platforms. By now, brands have become aware and have massively started enforcing their rights in domain names by either acquiring them or evicting cybersquatters; but little is done about the usernames on social media handles.

To give context, the Internet Corporation for Assigned Names and Numbers (ICANN), through its Uniform-Domain Name Dispute-Resolution Policy (UDRP) resolves disputes regarding the registration of internet domain names for generic top-level domains [gTLD] like .com, .org, .net, etc. A similar dispute resolution process exists for country code top-level domains [ccTLD] as well. For instance, in India, we have the .IN Domain Name Dispute Resolution Policy (INDRP) which assists brands in claiming .in, .co.in, .edu.in, etc. domain names from cybersquatters.

If a domain name is found to be confusingly similar to a registered trade mark, the trade mark owner may be able to recover the domain name from the current registrant through UDRP or .INDRP proceeding. There are three key elements for resolving a gTLD domain name disputes:

i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

ii) The current registrant of the domain name has no rights or legitimate interests in the domain name; and

iii) The domain name has been registered and is being used in bad faith.

An essential similarity between domain names and social media handles is that both are acquired on a first-come, first-serve basis. Let us understand through an example — a company holds the trade mark in the name ABCDE123. If I, as the lawful owner, do not proactively buy the domain names ABCDE123.com or ABCDE123.in, chances are that someone else will, if the domain name is available. I have two options now: either settle the matter by acquiring the domain name by paying monetary compensation and getting the domain name back from the registered owner or file a complaint under the UDRP/.INDRP policies, whichever is applicable.

Now, in the case of social media handles, if someone gets @ABCDE123 handle on Instagram, I, as the lawful owner, might not have a direct recourse to recover and get the handle for my business. Unlike the Whois lookup meant for domain names, one cannot even look for the details to find out information about the current owner of a username. Further, Instagram, in its policy, states:

What is not a violation?

Using another's trademark in a way that has nothing to do with the product or service for which the trademark was granted is not a violation of Instagram's trademark policy. Note that Instagram usernames are provided on a first-come, first-served basis and may not be reserved.

Does this mean I can create an Instagram handle, containing the trade mark of a reputed company, and start posting content unrelated to products or services that this reputed company offers? While there are high chances that I am riding on the goodwill of a well-established company to grow my audience size [that may gradually help in monetisation], I cannot be held accountable for the same under the platform's policy. What can make it worse is that without a UDRP-like mechanism, the ultimate decision is arrived at by the platform's policies. Just like Instagram, other social media platforms also have a similar policy in place.

In the present times, social media platforms have become an enabler in many ways for both businesses and consumers. For the consumers, it is not limited to a tool that keeps one updated with new launches or news, but may also offer quicker customer support assistance in case of service deficiency. While the brands must unanimously agree that social media platforms are crucial for brand visibility, the brands, on the other hand, help generate revenue for these platforms.

There can be two ways in which platforms can assist brand owners in enforcing their rights in the usernames, which are most of the time ‘brand identifiers’. Usage of advanced artificial intelligence-based tools may help platforms recognise the use of registered trademarks, and flag them at the time of username registration [the pre-discovery mechanism]; or, similar to the takedown policies on intellectual property infringement on these platforms, the usernames can be transferred to the registered proprietor of a trade mark after an intimation with proof of ownership is given to them [post-discovery mechanism]. Doing this will not only help in affixing liabilities but also become an essential factor in creating a consistent brand voice across social media platforms for companies.

The writer is a Chevening Scholar; Assistant Professor, Jindal Global Law School; and Of Counsel, Scriboard, New Delhi. Views expressed are personal