Legal Question in Intellectual Property in California

Re: Domain Trademarks

In my opinion, you have nothing to worry about so long as the other organization (in Japan) is relatively obscure and not famous. The issue here is not copyright and, to a large degree, not even trademark law. If anything, the issue is whether or not you are committing "cybersquatting," the practice of wrongfully registering a domain name that logically suggests, or ought to belong to, a larger, well-known organization. This practice is defined in and prohibited by a fairly recent federal law -- the Anticybersquatting Consumer Protection Act of 1999, P.L. 106-113. Usually, to be prosecuted under the ACPA, the registrant of the challenged domain name must have acted with a bad-faith intent to interfere with a trandemark. If you aren't deliberately siphoning off the other church's inquiries or trying to market the domain name to them, you would probably not be liable under the Act.

One of the factors examined by courts to see if the Act is violated is whether the trademark potentially infringed is famous, e.g. "Coca-Cola" or "IBM."

Unless you have an improper motive, which doesn't seem likely, I would advise you to tell the Japanese organization that you believe you are operating within your rights.

Re: Domain Trademarks

First, yes, religious organizations are entitled to trademarks, but in the US the enforcement of the mark may be subject to First Amendment - Freedom of Religion considerations. Consider the following sample description of church services taken from the US trademark database: "IC 042. US 100. G & S: Religious and Ministerial Services Including Pastoral Counseling. " As such a domain name dispute may initiated by them, if they have a valid trademark registration (even in Japan) that predates your domain name registration date. So you should not necessarily treat their claim as groundless.

Your note indicates that they claim you are in copyright infringment of their name. However, the types of words and phrases that can be trademarked and/ or used as domain names are not generally protectable under copyright law. Copyright protects artistic expression while trademark provides exclusive rights for certain marks to identify the source of goods or services. Short phrases generally do not meet the minimum level of creativity required for copyright law protection while they may be perfect for trademark law protection.

You should probably review the facts of your case with an IP attorney so that a proper response to their claim may be prepared.

Regards,

Don