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
MOTION TO STAY DISCOVERY
This is a reverse domain name hijacking case.(1) Plaintiff Strick Corporation ("SC") covets the domain name strick.com and has asked this Court to order that ownership of the domain name be transferred to it (Amended Complaint, page 15). SC does so after trying, and failing, to obtain the coveted domain name in two previous forums.
The first attempt. In 1996 SC tried to use the domain name dispute policy of Network Solutions, Inc. ("NSI") to force Mr. Strickland to hand over the domain name. Instead, NSI placed the domain name "on hold," which left the domain name unavailable to anyone.
The second attempt. On May 5, 2000 SC tried to use the domain name dispute policy of the Internet Corporation for Assigned Names and Numbers ("ICANN") to obtain the strick.com domain name from Mr. Strickland. Two retired judges and a professor ruled against SC and in favor of Mr. Strickland.
The third attempt. On June 30, 2000 SC filed this action.
Why Mr. Strickland needs this relief
SC had approximately $220 million in sales last year (Complaint, para. 17, p. 4); in contrast, Mr. Strickland is of limited means. Mr. Strickland is innocent of any wrongdoing, as may perhaps be inferred from the fact that SC lost on the merits in the earlier proceeding. He has already incurred the expense of the proceeding before NSI, and he has already incurred the expense of the proceeding before ICANN. Full-bore discovery on all issues, lasting many months, would far exceed Mr. Strickland's limited resources, especially after the cost of the two earlier proceedings.
Why SC does not need discovery at this time
There are no undisputed facts. There are, quite simply, no undisputed facts in this case. The timeline is clear and undisputed. Various correspondence is of record in this dispute, the authenticity of which is undisputed. It is undisputed that the plaintiff makes truck trailers and that the defendant is a computer consultant. Virtually every fact proffered by either side may be readily stipulated to by both sides (the only remaining issue being admissability into evidence, a point mentioned below). Quite simply, no discovery is needed.
Some facts urged to show liability are inadmissable in evidence. There have been settlement discussions in this case. In the previous forum, SC proffered some of the settlement discussions in an effort to show liability, and it is anticipated that SC will likewise proffer such settlement discussions in this Court. This is, of course, improper under Federal Rule of Evidence 408. When such proffer is stricken from the Complaint and expressly excluded from evidence, very little will remain in SC's case. In any event, all of the settlement discussions in the case are fully known to both parties; no discovery is needed to obtain them. And such discussions are inadmissable under FRE 408, such inadmissability being the subject of the accompanying Motion for Summary Judgment and to Exclude.
SC cannot be heard to say it needs discovery now. The Motion for Summary Judgment and to Exclude puts forward the undisputed facts and asks this Court to rule in Mr. Strickland's favor. It states, for example, that there are simply no facts in this dispute which would possibly permit a finding of trademark infringement.
SC filed this action, its attorneys presumably well aware of their obligation under Rule 11 not to sign the Complaint and Amended Complaint until after performing a diligent inquiry reasonable under the circumstances. Presumably SC and its attorneys made diligent inquiry before commencing their NSI proceeding. Likewise, presumably SC and its attorneys made diligent inquiry before commencing their ICANN proceeding (a proceeding resulting in a ruling against SC and in favor of Mr. Strickland). With three diligent inquiries having been made, we must assume that SC already possesses such evidence as it feels would support its claims. SC ought to be able, without any effort other than a review of its existing files, to put forward its prima facie case in opposition to the Motion for Summary Judgment.
If, on the other hand, SC opposes this Motion to Stay Discovery, it is hoped that this Court will recognize that SC does not actually have even a prima facie case. If SC is heard to say that it needs discovery to prepare opposition to the Motion for Summary Judgment, for example, this should be recognized as an effort to wear down Mr. Strickland with the well-known high costs of full-bore discovery.
In the alternative, Mr. Strickland begs this Court's intercession to limit the cost of discovery
This Motion asks that discovery be stayed pending the disposition of the co-filed Motion for Summary Judgment and to Exclude, and it is requested that this Motion to Stay Discovery be granted for the reasons given above. If, however, this Court chooses to deny this Motion to Stay Discovery, it is earnestly requested that this Court involve itself in all aspects of discovery, including scheduling and limiting of discovery, so as to keep the expense of this case within Mr. Strickland's limited means.
Dated November 20, 2000.
________________________
Carl Oppedahl
Admitted pro hac vice on October 12, 2000
Oppedahl & Larson LLP
P O Box 5088
Dillon, CO 80435-5088
Telephone 970-468-6600
Email: oppedahl@patents.com
Certificate of Service
I hereby certify that this paper has been served upon plaintiff, Strick Corp., by its attorneys:
Arthur H. Seidel, Esq.
Seidel, Gonda, Lavorgna & Monaco, P.C.
Two Penn Center Plaza #1800
Philadelphia, PA 19102-1786
by Federal Express, airbill number 790404067703 upon Mr. Seidel, this 20th day of November, 2000.
___________________________
1. The first reverse domain name hijacking cases arose in about 1996, and such cases are now commonplace. "In [some] cases, the parties might be mere 'twins,' both having the right to use the name in different areas or contexts. This has led to the problem of 'poaching' via 'reverse domain name hijacking,' which occurs when a trademark holder seeks to obtain a domain name from another person who also holds a colorable claim to the same name." Nathenson, Ira S., Showdown at the Domain Name Corral, 58 U. Pitt. L. Rev. 911, 915 (1997) (emphasis added). "[An] issue arising under the current domain name system is known as reverse domain name hijacking. In this scenario, trademark holders attempt to recapture existing domain names from legitimate users for their own use." Gole, Rebecca W., Playing the Name Game, 51 Fed. Comm. L.J. 403, 412 (1999) (emphasis added).