UNITED STATES DISTRICT COURT FOR THE
EASTERN DISTRICT OF PENNSYLVANIA
(PHILADELPHIA)
Strick Corporation,
plaintiff
v.
James B. Strickland,
defendant
Civil action no. 00-CV-3343
JUDGE BRUCE W. KAUFFMAN
ANSWER AND COUNTERCLAIMS
James B. Strickland, Jr., an individual, speaking through his attorneys, hereby answers the Complaint of the Strick Corporation, and presents Counterclaims against the Strick Corporation. James B. Strickland Jr. also requests a trial by jury as to all issues so triable.
1. Admitted that the action purports to be for trademark infringement, unfair competition, false designation of origin, dilution and unjust enrichment, but denied that James B. Strickland Jr. ("Mr. Strickland") has engaged in trademark infringement, unfair competition, false designation of origin, dilution or unjust enrichment.
2. Mr. Strickland denies knowledge sufficient to admit or deny.
3. Admitted.
4. Denied.
5. Admitted that this action purports to arise under the trademark laws of the United States. Denied that the amount in controversy as alleged by plaintiff exceeds $75,000. Denied that Mr. Strickland has engaged in any of the conduct alleged, and otherwise denied.
6. Admitted that if this Court has jurisdiction under the trademark laws of the United States, then this court has supplemental jurisdiction as pled, and otherwise denied.
7. Admitted that this action bases venue upon 28 USC sec. 1391, and otherwise denied.
8. Denied.
9. Admitted that plaintiff manufactures trailers. Mr. Strickland otherwise denies knowledge sufficient to admit or deny.
10. Mr. Strickland denies knowledge sufficient to admit or deny.
11. Mr. Strickland denies knowledge sufficient to admit or deny.
12. Denied that the mark is "famous" in the common dictionary sense of the term.
13. Admitted that an Exhibit A is attached to the Complaint. Mr. Strickland otherwise denies knowledge sufficient to admit or deny.
14. Denied that plaintiff's use of the mark "STRICK" is unique to plaintiff. Further denied that it is arbitrary, and Mr. Strickland otherwise denies knowledge sufficient to admit or deny.
15. Admitted that the web site of the US Patent and Trademark Office lists the trademark registrations alleged, admitted that an Exhibit B is attached to the Complaint, denied that registration number 541,737 is for "STRICK" in block letters, and otherwise denied.
16. Admitted that plaintiff is the named registrant for the listed domain names, and that an Exhibit C is attached to the Complaint. Mr. Strickland otherwise denies knowledge sufficient to admit or deny.
17. Admitted that an Exhibit D, an Exhibit E, and Exhibit F are attached to the Complaint. Admitted further that Exhibit E is a A Dun & Bradstreet report giving plaintiff's annual sales as $220 million. Mr. Strickland otherwise denies knowledge sufficient to admit or deny.
18. Mr. Strickland denies knowledge sufficient to admit or deny.
19. Admitted that plaintiff could have obtained the "strick.com" domain name simply by registering it before Mr. Strickland did. Denied that Mr. Stickland had ever heard of plaintiff when Mr. Strickland registered his Internet domain name "strick.com", and otherwise denied.
20. Admitted that plaintiff could have obtained the "strick.com" domain name simply by registering it before Mr. Strickland did. Admitted that Exhibit G speaks for itself. Mr. Strickland otherwise denies knowledge sufficient to admit or deny.
21. Denied.
22. Admitted that after plaintiff's wrongful actions to deprive Mr. Strickland of his "strick.com" domain name, Mr. Strickland was forced to use a different domain name and business name. Admitted further that Exhibits H and I speak for themselves, and otherwise denied.
23. Admitted that due to plaintiff's wrongful actions, Mr. Strickland was deprived of use of the "strick.com" domain name on or about January 17, 1997. Denied that there was a "strick.com" web site at any time prior to January 17, 1997. Denied that the "strick.com" domain name functioned in any way at all between January 17, 1997 and July 10, 2000.
24. Admitted that there are many legitimate users of the name "Strick", including Mr. Strickland, and that members of the public and the trade are well aware of this, and otherwise denied.
25. Admitted that there are many legitimate users of the name "Strick", including Mr. Strickland, and that members of the public and the trade are well aware of this, and otherwise denied.
26. Admitted that there are many legitimate users of the name "Strick", including Mr. Strickland, and that persons including potential customers are well aware of this, and otherwise denied.
27. Admitted that due to plaintiff's wrongful actions to deprive Mr. Strickland of his "strick.com" domain name, the domain name was inactive for many years, and that this is the fault of plaintiff, not the fault of Mr. Strickland. Admitted further that if this has harmed plaintiff, this harm is plaintiff's fault and not that of Mr. Strickland. Admitted further that present visitors to the "strick.com" web site would never be confused, even for a moment, as to the affiliation, authorization or sponsorship thereof, and otherwise denied.
28. Denied.
29. Denied that plaintiff has any exclusive right to the word "strick", and otherwise denied.
30. Denied.
31. Admitted that when plaintiff adopted the mark "strick", plaintiff knew or should have known that it would never have exclusive rights to the word "strick". Admitted further that plaintiff could have had complete control over the content offered at the domain name "strick.com" by the simple step of registering it before Mr. Strickland did. Admitted further that there are many legitimate users of the name "Strick", including Mr. Strickland, and that persons including potential customers are well aware of this, and otherwise denied.
32. Denied.
33. Denied that Mr. Strickland has ever committed tortious acts as alleged, and otherwise denied..
34. No response required.
35. Denied.
36. Admitted that there are many legitimate users of the name "Strick", including Mr. Strickland, and that the public is well aware of this, and otherwise denied.
37. Admitted that there are many legitimate users of the name "Strick", including Mr. Strickland, and that the public is well aware of this, and otherwise denied.
38. Denied that Mr. Strickland has infringed, and denied that Mr. Strickland has caused dilution, and otherwise denied.
39. Admitted that domain names are first-come first-served, and that where a non-unique mark is concerned a mark user may well not be able to use its mark as its domain name on the Internet. Admitted further that there are many top-level domains other than ".com" and that plaintiff could use its mark "strick" as its domain name in connection with any of a variety of other top-level domains, and otherwise denied.
40. Denied that Mr. Strickland's actions are improper in any way, and otherwise denied.
41. Denied.
42. Denied.
43. Admitted that plaintiff is not entitled to any remedy at law, and thus denied that plaintiff has no adequate remedy at law. Denied that Mr. Strickland has committed any wrongful acts, and otherwise denied.
44. No response required.
45. Denied that Mr. Strickland has appropriated anything belonging to plaintiff, and otherwise denied.
46. Denied that Mr. Strickland has violated any rights of plaintiff, and otherwise denied.
47. Admitted that plaintiff is not entitled to any remedy at law, and thus denied that plaintiff has no adequate remedy at law. Denied that Mr. Strickland has committed any wrongful acts, and otherwise denied.
48. No response required.
49. Denied.
50. Denied that Mr. Strickland required authorization from anyone to adopt, register or use "strick.com", and otherwise denied.
51. Denied.
52. Denied.
53. Denied.
54. Admitted that plaintiff is not entitled to any remedy at law, and thus denied that plaintiff has no adequate remedy at law. Denied that Mr. Strickland has committed any wrongful acts, and otherwise denied.
55. No response required.
56. Admitted that the Complaint purports that this action arises under the Anticybersquatting Consumer Protection Act, and otherwise denied.
57. Admitted that a letter-by-letter comparison of "strick" and the first six letters of "strick.com" matches, and otherwise denied.
58. Denied.
59. Admitted that plaintiff is not entitled to any remedy at law, and thus denied that plaintiff has no adequate remedy at law. Denied that Mr. Strickland has committed any wrongful acts, and otherwise denied.
60. No response required.
61. Denied that Mr. Strickland has ever used any mark of plaintiff's, and otherwise denied.
62. Denied.
63. Denied that Mr. Strickland has ever used any mark of plaintiff's, and otherwise denied.
64. Denied.
65. Denied.
66. Denied.
67. Admitted that plaintiff is not entitled to any remedy at law, and thus denied that plaintiff has no adequate remedy at law. Denied that Mr. Strickland has committed any wrongful acts, and otherwise denied.
68. Admitted that the Complaint purports to have this action arise under the common law, and otherwise denied.
69. No response required.
70. Admitted that plaintiff's conduct constitutes unfair competition, and otherwise denied.
71. Denied.
72. Admitted that the Complaint purports to have this action arise under the common law, and otherwise denied.
73. No response required.
74. Denied.
75. Admitted that the Complaint purports to have this action arise under the common law, and otherwise denied.
76. No response required.
77. Denied.
A. Mr. Strickland asserts the defense of estoppel.
B. Mr. Strickland asserts the defense of laches.
78. Defendant's name is James B. Strickland, Jr. Mr. Strickland's name was given to him by his parents. Mr. Strickland has used the nickname "Strick" since his childhood. As such he, an individual, has been commonly known by the name "Strick".
79. On about July 28, 1995 Mr. Strickland realized it would be good for his business to have an easy-to-remember Internet domain name. He found that he was too late to obtain the domain name "strickland.com" because it had been registered February 15, 1995. He then found that "strick.com" had not already been registered, so he registered it. He immediately began using it to communicate with clients and potential clients of his computer consulting and software development business.
80. When Mr. Strickland registered the "strick.com" domain name, he had never heard of plaintiff.
81. As admitted by plaintiff in its letter to Network Solutions Inc. ("NSI") dated August 13, 1996:
It appears to us that he has unknowingly usurped something that is of value to us and not to him, and we are attempting to protect what is ours.
(Emphasis added.) Stated plainly, plaintiff admits that when Mr. Strickland registered "strick.com", Mr. Strickland was not knowingly doing anything wrong.
82. Plaintiff could have obtained the "strick.com" domain name by the simple step of registering it at any time prior to July 28, 1995.
83. Mr. Strickland's ownership and use of the "strick.com" domain name has at all times been openly and honestly carried out, and Mr. Strickland has never done nothing to conceal his actions.
84. At the time Mr. Strickland registered his "strick.com" domain name, he had never heard of plaintiff. To this day Mr. Strickland has no independent knowledge of plaintiff's business.
85. Before any notice by plaintiff to Mr. Strickland of this dispute, Mr. Strickland had been using the name "strick.com" in connection with a bona fide offering of his computer consulting and software development services.
86. Mr. Strickland used the "strick.com" Internet domain name from July 28, 1995 to March 28, 1996, a period of eight months, during which time plaintiff said nothing to Mr. Strickland about the domain name.
87. By a letter dated March 29, 1996, plaintiff's attorney wrote to Mr. Strickland, asserting a trademark registration and threatening to "assert all of their rights available under and pursuant to the NSI policy as well as pursuant to applicable legal doctrine," if Mr. Strickland did not surrender the "strick.com" domain name to plaintiff.
86. Plaintiff's actions in writing the March 29, 1996 letter to Mr. Strickland were not, on information and belief, the result of any bona fide trademark policing activity. Instead, as admitted by plaintiff in its letter to NSI dated August 13, 1996:
As with many businesses, our customers and our suppliers are moving towards increasing use of electronic communications. Our competition in the industry were quicker than we were in recognizing this trend and are selling trailers ... through a website that identifies them. Frankly, we started this project when our customers wanted to know when STRICK.COM would be activated.
Stated plainly, what prompted plaintiff's demands that Mr. Strickland surrender the "strick.com" domain name had nothing to do with trademarks, but was simply that plaintiff tried to register the "strick.com" domain name and discovered that it had missed its chance by some eight months.
87. Prior to receiving the March 29, 1996 letter, Mr. Strickland had never heard of plaintiff.
88. By a letter dated April 15, 1996, Mr. Strickland answered the March 29, 1996 letter, attempting to respond to plaintiff's threats of legal action with a settlement offer.
89. By a letter dated August 13, 1996, plaintiff's counsel wrote to NSI asking NSI to cut off the "strick.com" domain name. Plaintiff stated:
We believe ... that our legal rights are clearly infringed by the current holder of the domain name.
90. Plaintiff's statement to NSI was false. On information and belief, at the time plaintiff made this statement to NSI, plaintiff knew it to be false. At the time plaintiff made this statement to NSI, plaintiff was on notice that its trademark registration related to trucks and that Mr. Strickland's business was computer consulting. Plaintiff was aware that there was no likelihood of confusion between plaintiff's truck business and Mr. Strickland's computer consulting business.
91. By a letter dated September 3, 1996, NSI informed Mr. Strickland that based upon plaintiff's representations, NSI had made plans to cut off the "strick.com" domain name.
92. By a letter dated September 30, 1996, plaintiff's attorney asked NSI to postpone its plans to cut off the "strick.com" domain name until October 21, 1996. NSI agreed to do so.
93. At some time prior to October 5, 1996, plaintiff came to the realization that NSI's plans to take the "strick.com" domain name away from Mr. Strickland did not include plans to hand over the domain name to plaintiff. Instead the domain name would be cut off and available to no one.
94. By a letter dated October 5, 1996, plaintiff wrote to Mr. Strickland pointing out that soon Mr. Strickland would no longer be able to make any use of the "strick.com" domain name, that it was only due to plaintiff's actions that the cutoff had been postponed for three weeks, and suggesting that Mr. Strickland"relinquish" the domain name to plaintiff. Plaintiff further stated:
My company is a family business that was founded by my grandfather Frank Strick over 50 years ago and we have been selling products around the world under this name since then.
95. Given the imminent loss of the "strick.com" domain name, Mr. Strickland was forced to select and register a different domain name. Mr. Strickland selected "tibertech.com" and registered the domain name on October 13, 1996.
96. On October 14, 1996, plaintiff again wrote to Mr. Strickland, noting that soon he would no longer have the use of "strick.com" and suggesting that he might as well give it to plaintiff since he would never get to use it again anyway.
97. On October 18, 1996, Mr. Strickland's counsel wrote to plaintiff's counsel:
I have asked you on several occasions whether you have any reason to think my client is an infringer, and have been met with silence. I have offered repeatedly that if there is anything my client is doing that you feel counts as trademark infringement, you should let me know and I would look into it. You have not taken me up on that offer.
98. To this day, plaintiff has never explained what conduct of Mr. Strickland supposedly counts as trademark infringement.
99. On about January 17, 1997, NSI cut off the "strick.com" domain name.
100. In about the Fall of 1999, on information and belief, NSI felt remorse at having cut off "strick.com" and many other domain names owned by others, based on unsupported allegations such as those that had been made by plaintiff. In about January of 2000, NSI announced that it would restore the many cutoff domain names, including "strick.com", unless the original complainant filed a lawsuit against the domain name owner or brought an ICANN challenge against the domain name owner, by a particular due date.
101. By January of 2000, "strick.com" had been cut off from Mr. Strickland for about three years. NSI's announced plan, however, was to restore "strick.com" to Mr. Strickland's use unless plaintiff sued Mr. Strickland or filed an ICANN complaint against him by the due date.
102. Plaintiff, wanting to deprive Mr. Strickland of the opportunity to regain the use of his "strick.com" domain name, chose not to sue Mr. Strickland but instead filed an ICANN challenge on May 5, 2000 against Mr. Strickland.
103. Because of plaintiff's actions in bringing an ICANN challenge against Mr. Strickland, NSI canceled its scheduled plans to restore the "strick.com" to Mr. Strickland's use.
104. In ICANN proceedings, a challenger such as plaintiff has the option to select among any of three arbitration service providers. Among the providers is the National Arbitration Forum ("NAF"). NAF has advertised that it is the place to go if a complainant wishes to obtain a domain name from its owner. For example, in a February 11, 2000 press release, NAF advertised that it had "evicted" a "cybersquatter". Plaintiff selected NAF for its action against Mr. Strickland.
105. In ICANN proceedings, a challenger such as plaintiff may select a one-person arbitration panel or a three-person arbitration panel. Plaintiff chose the least expensive option which was a one-person arbitration panel.
106. In ICANN proceedings, the domain name owner may, at its own expense, choose to have a three-person arbitration panel. Mr. Strickland paid NAF's fee to have the panel expanded from one arbitrator to three arbitrators. On about May 31, 2000, Mr. Strickland also prepared and filed a Response to the Complaint.
107. On about June 23, 2000, NAF informed the parties of the identities of the three arbitrators. The three arbitrators were Honorable Louis E. Condon (a former judge), Prof. Milton Mueller (a professor) and Honorable Nelson A. Diaz (a retired judge).
108. On June 30, 2000, after having read Mr. Strickland's Response and after having learned who the arbitrators would be, plaintiff filed the present action in the present court, and wrote to NAF asking that the NAF action be stayed pending the outcome of the present litigation.
109. On information and belief, plaintiff's actions in filing in federal court after having previously selected a National Arbitration Forum proceeding, were the basest form of forum-shopping.
110. On about July 7, 2000, the National Arbitration Forum announced the decision of the arbitration panel. The panel ruled in favor of Mr. Strickland, ordering that the "strick.com" domain name be restored to his use. The panel went on to say:
On the facts presented, there was a strong feeling that this case may well be an example of reverse domain name hijacking.
111. On about September 16, 2000, plaintiff for the first time served its Summons and Complaint in this action upon Mr. Strickland.
112. The cutoff of Mr. Strickland's "strick.com" domain name by NSI, caused by plaintiff's actions, has caused great harm to Mr. Strickland. For about three years, Mr. Strickland was unable to use the "strick.com" domain name to communicate with clients and potential clients of Mr.Strickland's computer consulting and software development business.
113. In 1995, and indeed to this day, registration of Internet domain names was and is basically "first-come, first-served". If plaintiff had wanted to possess the domain name "strick.com," it could have done so by the simple step of registering it before Mr. Strickland did.
114. Harvard University obtained its "harvard.edu" domain name in 1985. IBM obtained its "ibm.com" domain name in 1986. Plaintiff has never explained why, if the "strick.com" domain name was so important to it, it did not simply register the "strick.com" domain name some time between 1986 and 1995.
115. It is quite easy to find plaintiff's web page by typing in "Strick" at a search engine.
116. If advised by competent trademark counsel, a corporation will select a unique and coined name rather than a common name used by many other corporations.
117. Plaintiff failed to select a unique and coined name, but instead selected "Strick" which is in use by many businesses and persons.
118. Mr. Strickland repeats and re-alleges the allegations made in paragraphs 78-117.
119. Plaintiff has accused Mr. Strickland of falsely designating origin.
120. This accusation is without basis in fact or law, and is frivolous.
121. Plaintiff's actions have given rise to an actual and justiciable controversy pursuant to 28 USC § 2201 et seq..
122. Mr. Strickland seeks a declaratory judgment that he has not falsely designated any origin and that he is not otherwise in violation of Section 1125(a) of the Lanham Act.
123. Mr. Strickland repeats and re-alleges the allegations made in paragraphs 78-122.
124. Plaintiff has accused Mr. Strickland, due to the supposedly unauthorized use of the word "strick," of dilution.
125. Mr. Strickland have openly possessed the domain name "strick.com" without any effort to conceal same for over four years without causing any dilution or otherwise infringing any rights of plaintiff.
126. Section 43(c) of the Lanham Act was enacted in December of 1996.
127. Mr. Strickland's conduct in owning "strick.com" began prior to the date that Section 43(c) of the Lanham Act was enacted.
128. There is an actual case and controversy as to whether there is any basis to the accusations of plaintiff or whether the accusations are mere posturing to attempt to gain possession of the domain name "strick.com."
129. Plaintiff's allegation is frivolous and groundless, and Mr. Strickland seek a declaratory judgment that he is not in violation of Section 43(c) of the Lanham Act.
130. Mr. Strickland repeats and re-alleges the allegations made in paragraphs 78-129.
131. Plaintiff has accused Mr. Strickland, due to the supposedly unauthorized use of the word "strick," of trademark infringement.
132. Mr. Strickland has openly possessed the domain name "strick.com" without any effort to conceal same, for over four years without causing any confusion or otherwise infringing any rights of plaintiff.
133. There is thus an actual case and controversy as to whether there is any basis to the accusations of plaintiff, or whether the accusations are on the other hand mere posturing to attempt to gain possession of the domain name "strick.com."
134. Plaintiff's allegation is frivolous and groundless, and Mr. Strickland seeks a declaratory judgment that he is not in violation of Section 32 of the Lanham Act.
135. Mr. Strickland repeats and re-alleges the allegations made in paragraphs 78-134.
136. Plaintiff has accused Mr. Strickland of violation of Section 1125(d) of the Lanham Act, the AntiCybersquatting Consumer Protection Act.
137. Mr. Strickland obtained the domain name "strick.com" prior to having any knowledge whatsoever about plaintiff.
138. Plaintiff's allegation is frivolous and groundless, and Mr. Strickland seeks a declaratory judgment that he is not in violation of 15 USC § 1125(d).
139. Mr. Strickland further seeks an award of costs and attorneys fees under subsection (b)(2) thereof.
140. Mr. Strickland repeats and re-alleges the allegations made in paragraphs 78-139.
141. Plaintiff has accused Mr. Strickland of infringement and dilution under state law.
142. Plaintiff's accusation is frivolous and groundless, and Mr. Strickland seeks a declaratory judgment that he is not infringing or diluting under state law.
143. Mr. Strickland repeats and re-alleges the allegations made in paragraphs 78-142.
144. Plaintiff has accused Mr. Strickland of engaging in unfair competition.
145. Mr. Strickland seeks a declaratory judgment that he has not engaged and is not engaging in unfair competition.
146. Mr. Strickland repeats and re-alleges the allegations made in paragraphs 78-145.
147. Mr. Strickland seeks a declaratory judgment that he has not been and is not in violation of any common-law trademark rights plaintiff may have.
148. Mr. Strickland repeats and re-alleges the allegations made in paragraphs 78-147.
149. Mr. Strickland seeks a declaratory judgment that he has not been unjustly enriched.
150. Mr. Strickland repeats and re-alleges the allegations made in paragraphs 78-149.
151. Plaintiff sent a letter on or about August 13, 1996, making false statements about Mr. Strickland to Network Solutions, Inc.
152. In the August 13 letter, plaintiff stated:
We believe ... that our legal rights are clearly infringed by the current holder of the domain name.
153. Said false statements caused harm to Mr. Strickland.
154. Mr. Strickland seeks an award of damages and injunctive relief in respect of the false and injurious statements.
155. Mr. Strickland repeats and re-alleges the allegations made in paragraphs 78-154.
156. While Mr. Strickland is not a competitor of plaintiff in the ordinary sense of offering goods or services to the public, he is a competitor in the sense that he owns a domain name "strick.com" that is coveted by plaintiff, and thus he and plaintiff are in competition for ownership of the domain name.
157. Plaintiff has acted unfairly in its efforts to force Mr. Strickland to surrender the "strick.com" Internet domain name.
158. Plaintiff has thus engaged in unfair competition and is thus liable therefor.
159. Mr. Strickland repeats and re-alleges the allegations made in paragraphs 78-154.
160. On information and belief, plaintiff's actions in asserting frivolous and baseless trademark infringement, dilution, anti-cybersquatting and unfair competition claims against Mr. Strickland, and in communicating with Network Solutions, Inc., were motivated solely by plaintiff's coveting the "strick.com" domain name, and not by any good-faith belief that Mr. Strickland is actually infringing or diluting a trademark or engaged in unfair competition or cybersquatting.
161. As such, the actions of plaintiff were intentional, willful and malicious toward Mr. Strickland.
162. Plaintiff's actions were, on information and belief, designed solely to attempt to obtain through unjustified and improper means the "strick.com" domain name.
163. This has forced Mr. Strickland to expend time and money to file declaratory judgment counterclaims, has forced Mr. Strickland to incur the expense of filing a Response to the ICANN complaint, has forced Mr. Strickland to do without his "strick.com" domain name for three years, and has otherwise harmed Mr. Strickland.
164. No adequate common law or statutory remedy exists to fully compensate Mr. Strickland for these harms.
165. If plaintiff is not enjoined and punished, there is the danger that plaintiff will carry out further unjustified and improper actions causing harm to Mr. Strickland.
166. On information and belief, plaintiff has thereby committed the prima facie tort and is liable to Mr. Strickland therefor.
167. Mr. Strickland repeats and realleges the allegations made in paragraphs 78-166.
168. Plaintiff has misused the Lanham Act and has otherwise misused the legal system to attempt gain possession of the "strick.com" domain name, and has taken other steps to attempt to convert the "strick.com" domain name to itself.
169. Plaintiff has said that it is the rightful owner of the "strick.com" Internet domain name.
170. Mr. Strickland therefore requests that this Court order replevin of the "strick.com" domain name and quiet the title thereof in favor of Mr. Strickland.
171. Mr. Strickland repeats and re-alleges the allegations made in paragraphs 78-170.
172. Plaintiff cited US trademark registrations to Mr. Strickland in its efforts to induce Mr. Strickland to surrender the "strick.com" domain name to it.
173. On information and belief when plaintiff cited its US trademark registrations in an effort to bully Mr. Strickland into forfeiting the "strick.com" domain name and threatened to sue Mr. Strickland and sued Mr. Strickland, plaintiff lacked any reasonable basis for a claim that Mr. Strickland was infringing.
174. Plaintiff cited US trademark registrations to Network Solutions, Inc. in its efforts to induce Network Solutions, Inc. to make plans to cut off Mr. Strickland's "strick.com" Internet domain name.
175. On information and belief when plaintiff cited its US trademark registrations in an effort to induce NSI to cutoff the "strick.com" domain name, plaintiff lacked any reasonable basis for a claim that Mr. Strickland was infringing.
176. Plaintiff cited US trademark registrations to the arbitrators of the National Arbitration Forum in its efforts to induce the arbitrators to award the "strick.com" Internet domain name to plaintiff.
177. On information and belief when plaintiff cited its US trademark registrations in an effort to induce the arbitrators to award the "strick.com" domain name to plaintiff, plaintiff lacked any reasonable basis for a claim that Mr. Strickland was infringing.
178. Plaintiff misused the trademark registrations by the actions just described and Mr. Strickland therefore requests the cancellation of the asserted trademark registrations pursuant to 15 USC § 1119.
WHEREFORE, Mr. Strickland prays in relation to plaintiff the following:
A. for a declaratory judgment that Mr. Strickland is not in violation of Section 1125(d) of the Lanham Act;
B. for a declaratory judgment that Mr. Strickland has not been and is not in violation of Section 32 of the Lanham Act, and that he has not been and is not infringing upon any trademark rights plaintiff may have in the term "strick" and that Mr. Strickland has not engaged in unfair competition;
C. for a declaratory judgment that he has not been and is not in violation of Section 43(a) or (c) of the Lanham Act, and that he has not diluted and is not diluting any trademark rights plaintiff may have in the term "strick";
D. for a declaratory judgment that Mr. Strickland has not been and is not in violation of any common law trademark rights plaintiff may have in the term "strick";
E. for a declaratory judgment that Mr. Strickland has not engaged in unfair competition;
F. for an order canceling the US trademark registrations asserted by plaintiff for misuse;
G. For a finding that plaintiff has engaged in unfair competition and is thus liable to Mr. Strickland for actual and punitive damages, in an amount to be determined at trial;
H. for a finding that plaintiff is liable to Mr. Strickland for actual and punitive damages for committing a prima facie tort, in an amount to be determined at trial;
I. for an injunction barring plaintiff from making further false and harmful statements about Mr. Strickland, and directing plaintiff to communicate to Network Solutions Inc. a withdrawal of its false and defamatory statements, and for a finding that plaintiff is liable to Mr. Strickland for actual and punitive damages for its defamation, in an amount to be determined at trial;
J. For an injunction directing plaintiff to cease from any further efforts to convert the "strick.com" domain name to its own use;
K. for money damages to be determined at trial resulting from plaintiff's tortious conduct,
L. for replevin of the "strick.com" domain name;
M. for an order quieting the title to the domain name "strick.com" in favor of Mr. Strickland;
N. for an award of attorneys' fees and costs; and
O. for such other relief as the Court deems appropriate.
Respectfully submitted,
Dated: October 6, 2000
By:
_________________________________
John B. Berryhill Ph.D.
Dann, Dorfman, Herrell and Skillman, PC
1601 Market Street #720
Philadelphia, PA 19103-2307
telephone 215-563-4100
Of counsel:
Carl Oppedahl
Marina T. Larson
Oppedahl & Larson LLP
P O Box 5088
Dillon, CO 80435-5088
telephone 970-468-6600
CERTIFICATE OF SERVICE
The undersigned certifies that this document was served upon the plaintiff by its counsel:
Arthur H. Seidel
Seidel, Gonda, Lavorgna & Monaco, P.C.
Two Penn Center Plaza #1800
Philadelphia, PA 19102-1786
by hand this sixth day of October, 2000.
_______________________________________