A good place to start is with WHOIS to establish the registration date
of voip.com. If you did not create the domain name on that date, then
someone else presumably did, which could imply prior use.
"Registry Data voip.com" Network Solutions (February 3, 2006)
http://www.networksolutions.com/whois/registry-data.jhtml;jsessionid=LS0IQLXYVE0BGCWMEAQCFEQ?whoistoken=1
states:
"Updated Date: 16-nov-2005
Creation Date: 10-oct-1997"
This strongly suggests that if you did not register voip.com on
October 10, 1997, that someone else did and may have used the domain.
An interesting, but not conclusive, indication someone may have used
voip.com before can be found by searching Google for voip.com.
://www.google.com/search?hl=en&q=voip.com lists
www.usa.att.com/callvantage/ as the only site under voip.com. It is
only by searching google for www.voip.com that what I assume is your
site appears: ://www.google.com/search?hl=en&lr=&q=www.voip.com&btnG=Search.
I have searched TESS at the USPTO, the European Office for
Harmonization in the Internal Market, and the Japanese Trademark
Database for trademarks containing the term "VOIP." VOIP.NET is a
registered trademark in the United States, but note that "NO CLAIM IS
MADE TO THE EXCLUSIVE RIGHT TO USE "VOIP" and "NET" APART FROM THE
MARK AS SHOWN": "VOIP.NET" USPTO
http://tess2.uspto.gov/bin/showfield?f=doc&state=i3g36q.2.4. This
suggests that your use of the voip.com domain is potentially secure.
However, a more potentially troublesome existing trademark is: "VOIP"
USPTO http://tess2.uspto.gov/bin/showfield?f=doc&state=i3g36q.2.54.
Fortunately, it was filed on April 29, 2005. If you were making use
of the voip.com domain name before that date, you are probably less
likely to be subjected to claims of cybersquatting. The firm has also
established the trademark "VOIP" in the EU as well, suggesting they
are serious about protecting their trademark, however (see: "VOIP"
Office for Harmonization in the Internal Market
http://oami.eu.int/CTMOnline/RequestManager/en_DetailCTM). There were
no obviously applicable trademarks in Japan when I searched for VOIP:
http://www3.ipdl.ncipi.go.jp/cgi-bin/ET/ep_index.cgi.
Since the firm VoIP, Inc. may well be interested in your use of
voip.com, I would like to provide you with some resources to help you
understand trademark law in the US to help you assess what threat they
might represent.
"The rules for understanding whether a legal conflict exists comes
from trademark law. Here are the basics you need to understand:
Names that identify the source of products or services in the
marketplace are trademarks.
Trademarks that are clever, memorable or suggestive are protected
under federal and state law.
Trademarks that are descriptive and have achieved distinction through
sales and advertising can be protected under federal and state law.
One trademark legally conflicts with another when the use of both
trademarks is likely to confuse customers about the products or
services, or their source.
In case of a legal conflict with a later user, the first commercial
user of a trademark owns it.
If a legal conflict is found to exist, the later user will probably
have to stop using the mark and may even have to pay the trademark
owner damages.
Customer Confusion
Applying these principles to your domain name selection, you are at
risk of losing your chosen domain name if the owner of an existing
trademark convinces a judge or arbitrator that your use of the domain
name makes it likely that customers would be confused as to the source
or quality of the products."
"Protected Trademarks
Customer confusion matters only if a domain name that's similar to the
one you want to use is a protected trademark. To be protected, a
trademark must be distinctive. A name may be distinctive because it is
made up (chumbo.com for an online software store), arbitrary in the
context of its use (apple.com for computer products), fanciful
(ragingbull.com for investment advice) or suggestive of the underlying
product or service (salon.com for an online magazine). If a domain
name uses surnames, geographic names or common words that describe
some aspect of the goods or services sold on the website
(healthanswers.com for online health information) it is ineligible for
trademark protection unless the owner can demonstrate distinction
through substantial sales and advertising. If the trademark owner has
been able to register a name with the U.S. Patent and Trademark
Office, it is probably distinctive.
Many domain names -- for instance, coffee.com, drugs.com and
business.com -- are potentially powerful domain names, but they're
generic. That is, they describe whole categories of products or
services. Generic terms can never be trademarks."
"Avoid Trademark Infringement When You Choose a Domain Name" Nolo
(2006) http://www.nolo.com/article.cfm/objectID/DD1CA29C-2C6E-424B-98702C46192940E4/111/228/195/ART/
You might prevail in court by arguing that VOIP is a generic term for
internet protocol-based telephony service, making trademarking of the
word "VOIP" invalid because it is not distinctive. If you registered
the domain voip.com before VoIP, Inc. trademarked "VOIP," then you
most likely have priority. This does not mean, unfortunately, that
VoIP,Inc. cannot have its attorneys contact you or sue you to try to
get your domain as described in:
"Enforcing Your Trademark Rights" by Attorney Richard Stim, Nolo
(2006) http://www.nolo.com/article.cfm/ObjectID/82AB4042-68AE-4043-B656554BB65C561F/catID/D8932879-DC34-43DF-BF65FC92D55FEE5D/310/274/ART/
A couple of additional articles you may find useful:
"What to Do If the Domain Name You Want Is Taken" Nolo
(2006)http://www.nolo.com/article.cfm/objectID/833508D3-D7F6-4415-BEC55F00F5333B9F/111/228/195/ART/
Note that the trademark or service mark must be actively used.
Therefore, even if someone used the domain previously, if they gave it
up and did not use the term on their products or services, then they
would have difficulty enforcing their trademark claim against you.
Additional legal remedies exist if you are found guilty of
cybersquatting. I do not believe this is applicable to your case
since you appear to be actively using the domain name, but this will
give you some additional information about tactics available to a
company claiming trademark infringement.
"Cybersquatting: What It Is and What Can Be Done About It" Nolo (2006)
http://www.nolo.com/article.cfm/objectID/60EC3491-B4B5-4A98-BB6E6632A2FA0CB2/111/228/195/ART/
Sincerely,
Wonko
Search terms: cybersquatting; Japanese trademarks; European trademarks |
