Facebook Goes After Their Trademark in Popular Domains

It’s common practice, and perhaps necessary for large companies to protect their Trademark.  I’ve written before about Google going after an incorrect spelling of their own Trademark, on http://googleappsengine.com, because it resembles one of their products.  Twitter is known to also go after domains with not only “Twitter” in the name, but “Tweet” and even “Twit” (even though that specific trademark is owned by Leo Laporte).  It has long been known that Facebook Apps are not to have the name “Facebook” in their names, but it would appear that Facebook is starting to go after domain names too.  Just recently, they have asked such major sites as Mari Smith’s WhyFacebook.com, to change their name in defense of their own Trademark.

In a post on Mari’s Facebook Page, Mari stated, “I took down my WhyFacebook.com blog this week. Long story. But basically Facebook are on a mission to reclaim all domains containing “facebook” – soooo, a wee word of warning in case you own any!!”  Mari, perhaps one of the most followed Facebook experts on the site, who also was named by FastCompany Magazine as the “Pied Piper of Facebook”, also ran one of the most intuitive and most followed blogs on how to manage a Facebook Page, build a fan base, and grow an audience using the site.  She had an incredible following of Brand managers and very large companies wanting to improve their brand presence.  She is now moving her content over to her own domain, MariSmith.com for future reference.

The request by Facebook begs the question whether other popular sites, such as AllFacebook.com and InsideFacebook.com (both of which I have contributed articles for in the past), have also received such Cease-and-Desist orders.  Mari states she was told these sites have received “special permission” from Facebook, which makes me wonder how this permission is obtained.  Even the domain for mine and my co-author Jason Alba’s website (which now redirects to our Fan Page) for our book is at risk: FacebookAdvice.com.  Or what about even the name of our book, “I’m on Facebook–Now What???” – is that at risk as well?

I think it’s safe to say that if anyone owns a domain with the name, “Facebook” in the title they are at risk to be taken down by Facebook.  This is something to be aware of when creating any sort of website – even your domain is not safe from Trademark infringement in the future.  Are you aware of any other sites receiving these cease-and-desist orders?

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44 thoughts on “Facebook Goes After Their Trademark in Popular Domains

  1. i received a cease and desist letter from Facebook for the FacebookEconomy.com…I never heard anything else from them and I just let the domain name expire…@marismith is, imo, a scamster so I'm glad FB is going after her 😉

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  2. This has forever been an issue and anyone who incorporates someone's trademark into their domain has to go into it knowing that at some point the trademark holder will come knocking.

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  3. for the record, I've always thought Mari Smith, @marismith was/is nothing more than one of the many “social media experts” who should be placed behind bars, for charging people $5,000 to learn how to use Facebook.
    apparently Mari Smith thinks so too, otherwise why else would she “live” in an RV?

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  4. I had a similar issue with a LinkedIn domain (LinkedInHelp.com – had it for over 2 yrs). Gave it up, no problem. I agree with Mark that there should be a nicer, cheaper way to approach this, but when I talked to someone at LI about it he said there are a ton of violations they go after… my impression was that it's easier to just state your position with some teeth at first rather than do a back-and-forth nice-guy thing.

    Regarding our book title, I'm told by IP attorneys that it is a non-issue….. but facebookadvice is probably in danger.

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  5. Fair use also applies to trademark law as well. Mostly trademark fire use is applied in first amendment reaching cases.

    There's also what is called “nominative use”, which basically means that you can use somebody's trademark to refer to their product. Meaning that if you're actually using Facebook to refer to Facebook, then it's not trademark infringement. This also applies to domain names, so a site named “aboutfacebook.com” would have a valid defense for use of the trademark, as long as the site contained material that was all about facebook.

    Just because you own a trademark doesn't mean you own the word itself. Facebook is probably in the wrong on several of these cases, and they are absolutely in the wrong for whyfacebook.com, especially if the site expresses criticism of Facebook (which would put it in First Amendment territory).

    Just remember, a cease and desist letter is NOT a legal document. It has no enforceability. Until a judge says you're wrong, you may not be in the wrong. In case of doubt, call the EFF. They're big on this sort of thing.

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  6. Mark, Mari deserves every bit of praise she has gotten. She knows her
    stuff, and continues to help many, often not even charging for what she
    does. I'm sorry, but she's one of the legit experts out there that deserves
    to be where she is. (I don't think she lives in an RV any more, either)

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  7. I bet they have a generic form they hand out to each violator. I agree it
    probably takes up much more expense than is necessary though. It's sad
    companies have to do this, but unfortunately it's the law and if they don't
    do this they can lose their Trademark. I hate it too.

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  8. Otto, I think you're right here. At least when it comes to domain disputes,
    so long as you're using the domain appropriately to its name it can't be
    taken from you, despite how many lawyers are breathing down your neck. It
    comes down to how long you want and are able to endure that and how hard
    they press to have you taken down at that point. In the end, I think I
    agree with you – a judge will rule in your favor. You probably have to
    decide at that point if your own legal fees to defend it all are worth it.
    IANAL, but that's what I remember from my legal classes in school.

    The EFF is a great idea – Mari should get them involved in this.

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  9. Jesse, re Mari Smith being “legit”…she has had me blocked on Facebook (and Twitter) for years…I have given her every chance to converse/defend herself, but she doesn't/won't…
    if she were “legit” would she herself, or have her assistant, take down http://tyandmari.com (the site she and her husband ran together…until he got smart and left her 😉

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  10. Mark, well, frankly, if I had someone impersonating me and constantly
    trolling me I would probably block them as well. I'm just stating from
    observation. BTW, I just unblocked you on Twitter – if you remember awhile
    back you did the same to me. You're not going to get much sympathy from me
    here, but I'd like to give you the benefit of the doubt. I suggest laying
    off this one.

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  11. Hey Jesse – thanks so much for your kind props.

    Trademark infringement clearly is a situation coming to more of a head these days. I've had the whyfacebook domain since 2007 and the issue of infringing trademark has been a lonnnng saga. I've really no one to blame but myself for this week's implosion. 😦

    Given Facebook seem to offer special exceptions to some sites (allfacebook, insidefacebook) and not others, it just doesn't make sense to me, however. I became like a deer in the headlights, not quite knowing the best strategy forward – figured I'd get a new domain and redirect all permalinks. But then decided to merge all posts (and subscribers) into marismith.com.

    It was just one of those gazillion things on my to-do list and I didn't give it sufficient priority.

    I've been dealing with the same gal in the legal dept since June last year (FB's counsel originally contacted me in Nov 2008!). The issue came back to life again at the beginning of this year when Facebook asked for all domains I owned containing their trademark (I had about 30!).

    But, I missed a few emails from the legal dept (they went to spam, ironically). So, as a way to “get my attention,” Facebook temporarily took down my fan page. Needless to say, I was cooperative… to a certain degree. I transferred all domains to FB save for whyfacebook.com, whilst my attorney and I continued to attempt to negotiate a domain redirect, buy more time, etc. etc. And my fan page was back up in 48 hours (though it took another 7+ days for my team and I to be added back as Admins, plus I lost all custom content).

    But, all to no avail. The legal dept gal wrote my attorney again this week and said I basically had to cease resolving whyfacebook or they
    threatened to deactivate my beloved fan page (with 10,000+ fans that I've spent three years building) on Wednesday (3/17) at 5pm… and
    there would be no recourse and it would be some time before they'd reactivate it. Hmmmmm.

    I ended up screwing up the shut-down — nixed my whole blog without a reliable backup. Now going back to the wayback archive, cache, hosting co… and, rather ironically, my Facebook Notes where I'd imported my blog for awhile before switching to Networked Blogs.

    In any case, using a Trademark is a direct violation of intellectual property rights. There is no legal recourse, regardless of how big an evangelist I am of Facebook… regardless of how many businesses I've helped to embrace FB and spend money on ads… regardless of the fact my book, Facebook Marketing: An Hour A Day comes out May 3. All the legal dept would tell me is they'd reviewed my blog and it didn't meet their critieria… whatever that is. (Frankly, I really didn't blog that often – but when I did, I wrote lengthy, tutorial-type posts that were of extreme benefit to my readers… and ultimately very well indexed).

    I’m certain Facebook wanted to make an example of me. If you have an active domain containing ‘facebook’ (or, I understand Twitter are going after domains with ‘twitter’ or ‘tweet’) I would strongly recommend you switch to another domain without Trademark infringement. In the end, you’ll have to anyway.

    So, onwards I go… completely trusting that the Universe has a grander plan for me and I ought to have taken much, much faster action some time ago. I had plenty warning.

    The good news is Facebook cannot take away my own business, brand, community, intellectual property or social equity. 😉
    Cheers,
    @marismith

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  12. Wow, thanks Otto and Jesse. I wasn't aware of the EFF – will do some research.

    Indeed, I wasn't about to incur a big legal bill to battle this one out with Facebook. With the final threat to take my extremely active fan page down by this Weds at 5pm, I knew they were not messing around this time. Blackmail, we could say. I literally had to weigh up which one I was more invested in keeping alive – my fan page? or my blog? 😦

    The primary purpose of whyfacebook was to teach businesses *why* they should tap into the power of Facebook. Alas, the main reason Facebook told me they wanted the domain was because they didn't want any confusion when people did a search on Google and my site came up … perhaps diverting traffic away from Facebook. Hmph!

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  13. Very true, Wayne. In fact, the gal in FB's legal department told me she used to have the same role at Ebay. Back in summer of 2008, they were going after 11,000 domains containing 'facebook.' I imagine that number is far higher now!

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  14. Wow – if anything drives the point that Facebook owns your identity, this
    does. Thanks for sharing this Mari – if they're killing your content and
    Fan Pages just because you are in violation of their Trademark, that proves
    the whole “walled garden” concept more than anything. I thought they were
    trying to get rid of that perception. Let's hope their new “OpenGraph API”
    truly frees you from their grasp in some way.

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  15. Sounds like a great way to turn away your most vocal users and supporters.
    Surely there's a better way? This is sounding very much like some of the
    experiences I've had with the Twitter API.

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  16. Mark:

    RE: How much does it cost for Cease and Desist Letter.

    I am a member of PrePaid Legal and I believe I can get one done FREE of charge “through my membership!” I believe I am entitled to a few letters FREE for the price of my active membership each year. I can be wrong, but I believe this is true.

    I pay PrePaid Legal $24 @ month for the peace of mind to know I can talk to a lawyer at any time.

    This is NOT an advertisement for PrePaid Legal, I am just showing that it might not be a costly proposition to get a letter done. For sure it is the cheapest way I know to get true Legal advice. Each state offers different PrePaid Legal services. I am in NYS, so I do not get some of the goodies that most other states get and the price is different throughout the United States. I am an “in-active” PrePaid Legal Associate, but I am sharing what I remember. If interested you can check out their site for yourself.

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  17. Ya, true — I essentially had to weigh up which was more important to me to keep. I found it astounding that FB would threaten to take away the very thing they're trying to promote: active fan pages! Of course, they knew where my “pain-point” was with the amount of daily activity on my fan page… but, still, makes zero sense. I reckon the gal in legal was simply tasked with her assignment and would stop at nothing to reclaim those domains.

    Actually, a colleague of mine got a tee-shirt when she surrendered her domain; it said “I was contacted by Facebook's legal department and all I got was this lousy tee-shirt” … in peeling letters, no less. I'm waiting with bated breath for mine. hahaa!!! 😀

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  18. Ya, true — I essentially had to weigh up which was more important to me to keep. I found it astounding that FB would threaten to take away the very thing they're trying to promote: active fan pages! Of course, they knew where my “pain-point” was with the amount of daily activity on my fan page… but, still, makes zero sense. I reckon the gal in legal was simply tasked with her assignment and would stop at nothing to reclaim those domains.

    Actually, a colleague of mine got a tee-shirt when she surrendered her domain; it said “I was contacted by Facebook's legal department and all I got was this lousy tee-shirt” … in peeling letters, no less. I'm waiting with bated breath for mine. hahaa!!! 😀

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  19. Hey Mari, I admire you for giving it all you could to keep your blog. It appears to me like Facebook is shooting itself in the foot by trying to effectively take down amazing free advertising for them – ie Mari Smith! I guess they presume people are always going to flock to them regardless, but without the tutorials by you and others in your field, many people would have no idea how to use certain aspects of FB, particularly fanpages. It smacks of arrogance to me, but maybe you're right about the girl in legal just wanting to do her job regardless (hope you get the t-shirt!!).

    I think FB and Twitter may need to be careful of how they treat their most loyal followers. There are more and more social media platforms out there. Who knows when Facebook and Twitter will be overtaken by another platform who treats their supporters with more generosity and grace.

    I believe people like you and Jesse deserve some kind of life-time achievement award from the likes of Facebook and Twitter – or even some cold, hard cash for all the work you've done to promote them 🙂 It's a shame they don't seem to appreciate you both for the amazing stand you are for their businesses. I would like to say that I, for one, certainly do.

    What I don't appreciate is the constant changes on facebook that just make it harder to navigate, tell me who all my friends make friends with and the other blah blah blah. I think it's time they listened to the punters – not sure what's driving them otherwise, though I guess it must be the seductive call of the $$$

    Keep Smiling 😀 Louise @itsmylifedvds

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  20. Hi Jesse,
    I got a letter from Facebook last summer for my domain TheFacebookGuide.com I wrote back to them asking what they were going to do regarding all the other Facebook domains like insidefacebook , allfacebook and whyfacebook. I never heard back from them so I assumed it was just a mass email that they sent out to everyone using scare tactics. Luckily I learned my lesson and have since changed my main brand over to CrowdConversion.com . It sucks that Mari got singled out since there was so much valuable content on her blog, losing all those backlinks and google rankings must hurt a lot.

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  21. I wonder what they will do with the domains I own that contain “Facebook” but am not using. Maybe this would be a good time to put them in the GoDaddy auction!

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  22. what's *astounding* to me is that you haven't been locked up yet (for charging folk $5,000 to learn how to use Facebook) (wtf)
    oh yeah, maybe avoding the law is why u live in a f'in rv, as per http://tyandmari.com
    and could u please take that crap down, your husband left you for a (much younger, mentally stable) woman last year.

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  23. < << personally, I doubt if Facebook uses "PrePaid Legal" ;)>>>

    LOL Mark:

    That is too funny… Prepaid Legal is for those who need legal help, but cannot afford to keep a regular attorney on retainer! 😉 It's like Medical Insurance for the Law.

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  24. hi

    All your comments are great in the TM fields. I would like to know if building a website based on your fan page on facebook is a breach of some sort.

    I have a fan page with a few fans and i would like to build my website around the facebook page (Chocolate Cake). Is this at all possable?

    Regards

    Ivan

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  25. I dont blame facebook for doing that. After all who will know if its a real facebook page if everybody is gonna add the name facebook to there pages?

    All it will do is increase spam, viruses, and alot more security threats if facebook allows everybody to use the name facebook onto their sites or facebook pages.

    The dislike button scam is a great example. Cause they thought it was facebook owned.

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  26. < << personally, I doubt if Facebook uses "PrePaid Legal" ;)>>>

    LOL Mark:

    That is too funny… Prepaid Legal is for those who need legal help, but cannot afford to keep a regular attorney on retainer! 😉 It's like Medical Insurance for the Law.

    Like

  27. what's *astounding* to me is that you haven't been locked up yet (for charging folk $5,000 to learn how to use Facebook) (wtf)
    oh yeah, maybe avoding the law is why u live in a f'in rv, as per http://tyandmari.com
    and could u please take that crap down, your husband left you for a (much younger, mentally stable) woman last year.

    Like

  28. Hi Jesse,
    I got a letter from Facebook last summer for my domain TheFacebookGuide.com I wrote back to them asking what they were going to do regarding all the other Facebook domains like insidefacebook , allfacebook and whyfacebook. I never heard back from them so I assumed it was just a mass email that they sent out to everyone using scare tactics. Luckily I learned my lesson and have since changed my main brand over to CrowdConversion.com . It sucks that Mari got singled out since there was so much valuable content on her blog, losing all those backlinks and google rankings must hurt a lot.

    Like

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