THE NATIONAL ARBITRATION FORUM P.0. BOX 50191 MINNEAPOLIS, MINNESOTA 55405 USA Strick Corporation, Complainant vs. James B. Strickland, Jr. Respondent DOMAIN NAME DISPUTE ADMINISTRATIVE PANEL DECISION Forum File Number FA # 94801
The above styled matter came on for an administrative hearing on June 30, 2000 before a three judge panel consisting of Honorable Louis E. Condon, Chair, Professor Milton Mueller and Honorable R. Glen Ayers in accordance with ICANN'S Uniform Domain Name Dispute Resolution Policy and Rules. The arbitrators certify that they have no conflict of interest in this matter. After due consideration of the written record as submitted, the following decision was made:
Disputed Domain Name(s): STRICK.COM Domain Registrant: James B. Strickland, Jr. Date Registered: July 28, 1995 Domain Registrar: NETWORK SOLUTIONS, INC.
Complainant, Strick Corporation, submitted a Complaint to the National Arbitration Forum (The Forum) electronically on May 10, 2000; The Forum received a hard copy of the Complaint on May 12, 2000.
On May 13, 2000, Network Solutions, Inc. (NSI) confirmed by e-mail to The Forum that the domain name "Strick.com" is registered with NSI, and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 4.0 and has thereby agreed to resolve domain name disputes brought by third parties in accordance with ICANN"s UDRP.
On May 12, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 1, 2000, by which Respondent could file a Response to the Complaint, was transmitted to the Respondent via e-mail, post and fax, and to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts by e-mail.
On June 6, 2000, pursuant to Respondent's request to have the dispute decided by a three Member panel, The Forum appointed Louis E. Condon as Chair with Judge Glen Ayers and Professor Milton Mueller. Having reviewed the communications records in the case file, the Administrative Panel (the Panel) finds that The Forum has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent". Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, The Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable.
The Complainant requests that the domain names [sic] be transferred from the Respondent to the Complaint.
The Complainant contends that the Respondent has registered a domain name that is identical to its trademark registered for and in use by the Complainant. Further, the Complainant contends that the Respondent has no rights or legitimate interests to the domain name, and that the Respondent has registered and is using the name in bad faith.
Complainant is a manufacturer of transportation equipment and parts, and also manufacturers wood flooring. Complainant has conducted extensive advertising, marketing and promotion of the "Strick" trademark, trade name and service mark since at least 1936. Over 300,000 vehicles are in use in the United States bearing the "Strick" name.
Complainant has a web site at "STRICKTRLR.COM". Complainant owns the following registrations with the USPTO#541,737 - "STRICK" for freight and heavy duty trailers and truck bodies; #906,514 - "STRICK and Design" for transferable non-self propelled heavy duty trailers, semi-trailers, cargo containers, truck bodies, adapted to be mounted on trailer trucks, railway flat cars, and other conveyances; #906,145 - "STRICK" for heavy duty trailers, semi-trailers, durable cargo carrying units designed and built for conveyance by van size road vehicles, and truck bodies; #1,338,409 - "STRICK LEASE and Design" for rental of trailers.
Complainant is the owner of the domain names "STRCK.COM", "STRICKTRAILER.COM", "STRICKTRLR.COM", "STRICKCORP.COM", and "STRICKPARTS.COM". On March 29, 1996, Complainant through its attorney contacted Respondent seeking to obtain registration of the "STRICK.COM" domain name amicably if possible but through complaint to NSI or other legal means if necessary. Respondent replied that, although advised by his attorneys that he was not infringing upon the rights of Complainant, he too wanted to settle the matter amicably. Accordingly, he offered to assign "STRICK.COM" which he had been using for nearly a year for what it would cost him in fees, materials and time to notify his clients and colleagues. He estimated this to be $10,000. Complainant filed a complaint with Network Solutions under the previously existing version of the Domain Name Dispute Policy. NSI replied stating that the domain name would be placed on "Hold" 30 days after Respondent's receipt of notification.
Complainant asked NSI to defer placing "STRICK.COM" on "Hold" to allow the parties a chance to resolve the matter. Complainant offered Respondent"(1) to extend the period for Respondent to reply to the domain name complaint; (2) to donate $500 to the charity of Respondent's choice; and (3) to forward any e-mail to Respondent going to the domain name". The parties were unable to reach agreement and NSI placed the domain name on hold on January 10, 1997.
The Respondent denies the allegations of the Complaint, claiming he acted in good faith in registering the domain name without knowledge of the Complainant, and has used the domain name for a bona fide offering of goods and services.
About July 28, 1995, Respondent, James B. Strickland, Jr., attempted to register the domain name "STRICKLAND.COM" but found it had been registered about five months earlier. He then found that "STRICK.COM" had not been registered, so he registered it. Respondent had been commonly known by the nickname "Strick" since childhood. Respondent immediately began using "STRICK.COM" to communicate with clients and potential clients of his computer consulting and software development business. At the time, Respondent states he had no knowledge of the Complainant's business, nor had he ever heard of the Complainant. The first time he became aware of the Complainant was when he received the attorney's letter of March 29, 1996.
One of the options available to the Respondent under the previous UDRP was to register a different domain name and allow the disputed name to be placed on "Hold". This is what he did choosing "TIBERTECH.COM". However, Respondent continued to pay the NSI annual fees for the "STRICK.COM" name and NSI has continued to keep the domain name "on hold", unavailable for use by either party.
Respondent notes that the Complainant also owns the domain names "TRAILERSOURCE.NET", " TRAILERLINK.COM", and "TRAILERLINK.NET" in addition to those acknowledged by Complainant. In addition, Respondent notes that "there are dozens of businesses using the name "STRICK" according to his check of Dunn and Bradstreet listings. Respondent notes further that it is quite easy to find Complainant's web page by typing in "Strick" at a search engine. Respondent believes that no member of the trade or public would be confused, mistaken or deceived as between a computer consultant and a maker of truck trailers and trucking accessories.
Respondent places particular significance on the fact that Complainant admits that Respondent was not infringing on Complainant's trademarks when Respondent registered "STRICK.COM". In its letter to NSI, Complainant stated "It appears to us that (Mr. Strickland) has unknowingly usurped something that is of value to us and not to him...".
Respondent asks that the panel deny the relief requested by the Complainant and find that the Complainant is guilty of reverse domain name hijacking.
Paragraph 4(a) of the ICANN Uniform Domain Names Dispute Policy (Policy) directs that the Complainant must prove each of the following three elements in order to demonstrate claims that a domain name should be canceled or transferred:
The ICANN Rules DEFINITIONS state:
Reverse Domain Name Hijacking means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.
Rule 15(e) Panel Decisions states:
If after considering the submissions the Panel finds that the complainant was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
The Respondent's concedes that its domain name is identical to the Complainant's registered marks except for the addition of the domain name level designations. However, because of the ease of locating the Complainant's web page and the difference in the nature of their businesses potential clients seeking the Complainant's services on the Internet are not likely to be confused.
The Respondent is commonly known by the domain name, and was making a fair or legitimate use of the domain name at the time the complaint was made.. Policy Paragraph 4(c). The Respondent was not using the domain name with intent for commercial gain to misleadingly divert consumers from the Complainant. The Respondent has rights or legitimate interests in the domain name.
Complainant admits that Respondent had no intent to usurp Complainant's interest in its trademarks. On the basis of the documentation, the Panel finds no evidence that the Respondent registered and/or is using the domain names to prevent the Complainant's use of the trademark in a corresponding domain name or for the purpose of disrupting the Complainant's business. See Paragraph 4(b)(ii and (iii) of the ICANN Policy. Accordingly, the Respondent did not act in bad faith.
In the Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, posted September 29, 1999, and corrected October 1, 1999, under the section headed "How the Board's Policy Guidance Was Implemented" Paragraph 3 - Reverse Domain Name Hijacking points out several measures incorporated in the implementation documents designed to minimize this misuse of the Policy. It goes on to state:
There was some sentiment on the drafting committee that a footnote should be included after the term "reverse domain name hijacking" to refer to guidelines that would either be incorporated into or otherwise accompany the rules of procedure to identify how a Panel may decide that reverse domain name hijacking has occurred. ICANN staff and counsel feel that this elaboration is more prudently deferred until experience with proceedings under the policy and rules accumulates. (Emphasis added)
No member of the Panel was familiar with any decisions on this point. On the facts presented, there was a strong feeling that this case may well be an example of reverse domain name hijacking. However, without guidance from ICANN the Panel was reluctant to so rule.
The Complainant having failed to establish all three elements required by the ICANN Policy Rule 4(a), it is the decision of the Panel that the relief requested by the Complainant be denied. Accordingly, for all the foregoing reasons, it is ordered that the domain name "STRICK.COM" be released from the "Hold" with full use restored to the Respondent.
The ICANN Policy and Rules for handling domain name disputes have established very clear considerations to guide each panel on the three essential elements to be proven by the Complainant. On the issue of reverse domain name hijacking, as indicated above, the Board specifically decided to wait before such guidance would be given. The Board's reasoning and logic may be considerably different from this Panel's. While the Panel feels this is a close case based on the facts, the Panelists cannot agree to formally rule that it is because of the absence of any guidance from the policy. The Panel believes, however, that UDRP was intended to protect legitimate domain name registrants from bad faith complainants, and the ability to make a finding of reverse domain name hijacking is an important part of this protection. Therefore, the Panel urges ICANN to modify the UDRP to provide the needed guidance, hopefully at some time in the near future.
Dated July 3, 2000 Louis E. Condon, Arbitrator For the Panel