Another decision in favor of James Strickland, owner of strick.com

On August 27, 2001, the United States District Court for the Eastern District of Pennsylvania issued a Memorandum and Order in favor of James Strickland.

You can see:


Summary: Judge Kauffman of EDPA issued an opinion in a domain name case. (Our firm, Oppedahl & Larson LLP, represented the defendant.) The Court decided, on the merits, that Mr. Strickland was not a diluter of Strick Corporation's rights by ownership and use of "strick.com." The opinion, fourteen pages in length, contains quite a bit of discussion about domain names and trademarks and dilution and search engines.

It is clear that Internet surfers are inured to the false starts and excursions awaiting them and are unlikely to be dissuaded, or unnerved, when, after taking a stab at what they think is the most likely domain name for particular web site guess wrong and bring up another's webpage. ... The Court ... finds that any confusion that a consumer may have when reaching Defendant's web page rather than Plaintiff's site is not legally cognizable

(page 8, quoting punctuation omitted.)

Although the need to search [via a search engine] for a mark holder's site may rise to the level of inconvenience, this inconvenience is not cognizable.

(page 12, quoting punctuation omitted.)

It is clear that nothing in trademark law requires that title to domain names that incorporate trademarks or portions of trademarks be provided to trademark holders. To hold otherwise would create an immediate and indefinite monopoly to all famous mark holders on the Internet, by which they could lay claim to all .com domain names which are arguably 'the same' as their mark. The Court may not create such property rights-in-gross as a matter of dilution law. ... Trademark law does not support such a monopoly.

(page 13, quoting punctuation omitted.)


The details: The domain name being fought over was "strick.com," registered by the defendant, James Strickland, in 1995. (His nickname is "Strick.) He is a computer consultant.

The party seeking to obtain the domain name is plaintiff Strick Corporation ("SC"), a maker of truck trailers. (Go to any truck stop and many of the truck trailers you will see have the "Strick" brand name on them.) They have several trademark registrations, some going back decades.

In 1996, SC tried to register "strick.com" and discovered that it was already taken. SC wrote to Mr. Strickland asking him to give SC the domain name. Mr. Strickland declined to do so. SC then initiated an NSI proceeding and, as expected, NSI placed the domain name "on hold," available to nobody. As is the case with "on hold" domain names, it was thereafter listed on NSI's records as Mr. Strickland's domain name, but not usable by him.

As of January of 2000, NSI had several thousand domain names "on hold," and announced a new policy, which is that all of the "on hold" domain names would be restored to their owners, except in the case where a complainant were to file a new complaint, either through the ICANN process or in court. SC thus filed a complaint with the National Arbitration Forum in May of 2000.

Mr. Strickland requested and paid for a three-person panel in the NAF proceeding. After Mr. Strickland's UDRP response had been filed, and after NAF revealed the composition of the three-person panel, SC filed (but did not serve) a District Court complaint in EDPA. (This is the complaint that eventually led to the opinion and order above.) SC then petitioned NAF to discontinue its proceedings. A couple of days later, NAF rendered its opinion in favor of Mr. Strickland and against SC.

Some three months later, SC served the summons and complaint upon Mr. Strickland. Mr. Strickland answered, counterclaiming among other things for cancellation of SC's trademark registrations for misuse.

SC then moved to dismiss most of the counts from its complaint. (You can see the motion above.) Defendant did not oppose, and the motion was granted, leaving in the plaintiff's case only unfair competition and dilution claims.

Cross-motions as to plaintiff's claims were filed and fully briefed. Oral argument was held on June 22, 2001, at which time the Court invited the parties to file additional briefs. (Thetranscript of argument may be seen above.) Additional briefs were filed.

Now comes the District Court's decision in the case, which you can see above.