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 FOR SUMMARY JUDGMENT AND TO EXCLUDE
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.
Having failed in two previous forums, SC now turns to this forum. Unfortunately for SC, there is no federal or state cause of action for obtaining a domain name simply because one covets it. Thus, a party that covets a domain name and wishes to attempt to use the judiciary to obtain the domain name has no choice but to pretend that some violation of law has occurred. In this case SC, a maker of trailers, pretends that Mr. Strickland, a computer consultant, is a trademark infringer. SC also pretends that Mr. Strickland is a trademark diluter, a cybersquatter, an unfair competitor, and one who unjustly enriches himself.
This Court is asked to recognize this case for what it is -- a case in which plaintiff SC has no legitimate claim to the strick.com domain name, and in which SC enters its third forum and fourth year of trying improperly to take strick.com away from its owner.
Mr. Strickland has limited financial resources, especially when compared with SC's annual revenues of $220 million. It is earnestly requested that this Court deny SC's efforts to subject Mr. Strickland to years of trademark discovery and litigation, and that this Court instead grant summary judgment to Mr. Strickland on the baseless claims asserted by SC against him.
It does not appear that there are any disputed facts in this case. The chronology and the positions of the parties are clear and undisputed. As will be discussed in the "Argument" section below, nothing on the undisputed record shows even a prima facie case against Mr. Strickland. Nothing arose in the two previous forums to support SC in any way, and there is no reason to think that proceedings in this, the third forum, will be any different, except that it may cost Mr. Strickland a lot of money to prevail.
Undisputed Facts
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". (Declaration of Strickland, "Decl.," attached, para. 1.)
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. (Decl. para. 2.)
In a letter to Network Solutions Inc. ("NSI") dated August 13, 1996, SC stated that:
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.
(Exh. 1, emphasis added.)
SC could have obtained the "strick.com" domain name by the simple step of registering it at any time prior to July 28, 1995. (Decl. para. 3.)
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 anything to conceal his actions. (Decl. para. 4.)
At the time Mr. Strickland registered his "strick.com" domain name, he had never heard of SC. To this day Mr. Strickland has no independent knowledge of SC's business. (Decl. para. 5.)
Before any notice by SC 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. (Decl. para. 6.)
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 SC said nothing to Mr. Strickland about the domain name. (Decl. para. 7.)
By a letter dated March 29, 1996, (Exh. 2) SC'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 SC. (Decl. para. 8.)
Prior to receiving the March 29, 1996 letter, Mr. Strickland had never heard of SC. (Decl. para. 9.)
By a letter dated April 15, 1996, Mr. Strickland answered the March 29, 1996 letter, attempting to respond to SC's threats of legal action with a settlement offer (Exh. 3). (Decl. para. 10.)
By a letter dated August 13, 1996, SC's counsel wrote to NSI asking NSI to cut off the "strick.com" domain name. (Decl. para. 11.)
By a letter dated September 3, 1996, NSI informed Mr. Strickland that based upon SC's representations, NSI had made plans not to transfer the "strick.com" domain name to SC, but merely to place the "strick.com" domain name "on hold". (Decl. para. 12.)
By a letter dated September 30, 1996, SC's attorney asked NSI to postpone its plans to place the "strick.com" domain name "on hold" until October 21, 1996. NSI agreed to do so. (Decl. para. 13.)
By a letter dated October 5, 1996, SC 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, and suggesting that Mr. Strickland "relinquish" the domain name to SC. (Decl. para. 14.)
Given NSI's imminent plans to place the "strick.com" domain name "on hold", 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. (Decl. para. 15.)
On October 18, 1996, Mr. Strickland's counsel wrote to SC'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.
To this day, SC has never explained what conduct of Mr. Strickland supposedly counts as trademark infringement. (Decl. para. 16.)
On about January 17, 1997, NSI placed the "strick.com" domain name "on hold". (Decl. para. 17.)
In about January of 2000, NSI stated that it would restore "strick.com" to service unless SC filed a lawsuit against the domain name owner or brought an ICANN challenge against Mr. Strickland.
On May 5, 2000 SC, in response to NSI's statement, filed an ICANN challenge against Mr. Strickland. NSI thus canceled its plans to restore "strick.com" to service. (Decl. para. 18.)
In ICANN proceedings, a challenger such as SC 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". SC selected NAF for its action against Mr. Strickland.
In ICANN proceedings, a challenger such as SC may select a one-person arbitration panel or a three-person arbitration panel. SC chose the least expensive option which was a one-person arbitration panel.
In ICANN proceedings, the domain name owner may, at its own expense, choose to have a three-person arbitration panel even if the complainant has selected a one-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. (Decl. para. 19.)
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).
On June 30, 2000, after having read Mr. Strickland's Response and after having learned who the arbitrators would be, SC 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. NAF did not stay its action.
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. (Decl. para. 20.) 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.
(Exh. 4, pp. 5-6)
On about September 16, 2000, SC for the first time served its Summons and Complaint in this action upon Mr. Strickland. (Decl. para. 21.)
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, due to the domain name having been placed "on hold" by NSI at SC's request. (Decl. para. 22.)
In 1995, and indeed to this day, registration of Internet domain names was and is basically "first-come, first-served". If SC 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. (Decl. para. 23.)
Harvard University obtained its "harvard.edu" domain name in 1985. IBM obtained its "ibm.com" domain name in 1986. SC 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. (Decl. para. 24.)
It is quite easy to find SC's web page by typing in "Strick" at a search engine. (Decl. para. 25.)
Standard for grant of Summary Judgment
This motion seeks summary judgment pursuant to Fed.R.Civ.P. 56. A court may grant summary judgment only when the submissions in the record "show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(c). "The inquiry performed is the threshold inquiry of determining whether there is the need of a trial -- whether, in other words, there are any genuine factual issues that properly can be resolved only by a finder of fact because they may reasonably be resolved in favor of either party." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250 (1986). The party opposing summary judgment must "do more than simply show that there is some metaphysical doubt as to material facts." Matsushita Elec. Indus. Co. v. Zenith Radio Corp. , 485 U.S. 574, 586 (1986). If the opposing party's "evidence is merely colorable or is not significantly probative, summary judgment may be granted." Anderson, 477 U.S. at 249-50. However, in determining whether summary judgment is appropriate, "[t]he evidence of the non-movant is to be believed, and all justifiable inferences are to be drawn in his favor." Id. at 255. The inquiry is "whether the evidence presents a sufficient disagreement to require submission to a jury or whether it is so one-sided that one party must prevail as a matter of law." Id. at 251-52. When the non-moving party bears the burden of proving the claim or defense (as is the case here), the moving party can meet its burden by pointing out the absence of evidence submitted by the non-moving party. The moving party need not disprove the other party's case. See Celotex Corp. v. Catrett, 477 U.S. 317, 325, 91 L.Ed.2d 265, 106 S.Ct. 2548 (1986).
There is no trademark infringement
"A claim of trademark infringement is established when the plaintiff proves that: (1) its mark is valid and legally protectable; (2) it owns the mark; and (3) the defendant's use of the mark to identify its goods or services is likely to create confusion concerning the origin of those goods or services." Commerce Nat'l Ins. Serv. Inc. v. Commerce Ins. Agency Inc., 55 USPQ2d 1098 (3rd Cir. 2000) (Exh. 5), citing Opticians Ass'n of Am. v. Independent Opticians of Am., 920 F.2d 187, 192 (3rd Cir. 1990). In the present motion, only the issue of likelihood of confusion is addressed, since determination on this issue is dispositive in favor of Mr. Strickland.
As observed in Commerce Nat'l Ins.,
The likelihood of confusion analysis requires the evaluation of a number of factors including: (1) the degree of similarity between the owner's mark and the alleged infringing mark; (2) the strength of the owner's mark; (3) the price of the goods and other factors indicative of the care and attention expected of consumers when making a purchase; (4) the length of time defendant has used the mark without evidence of actual confusion arising; (5) the intent of the defendant in adopting the mark; (6) the evidence of actual confusion; (7) whether the goods, though not competing, are marketed through the same channels of trade and advertised through the same media; (8) the extent to which the targets of the parties' sales efforts are the same; (9) the relationship of the goods in the minds of the public because of the similarity of function; (10) other facts suggesting that the consuming public might expect the prior owner to expand into the defendant's market.
55 USPQ2d at 1103; accord, Scott Paper Co. v. Scott's Liquid Gold, Inc., 589 F.2d 1225 (3d Cir. 1978).
While it might seem immediately apparent that there is no likelihood of confusion where the nature of the goods are as diverse as it is here truck trailers versus computer consulting services, when these factors are analyzed in the context of the undisputed facts here, it is becomes even more clear. Indeed, it becomes impossible to imagine how SC and its counsel believed they met the requirement of Rule 11 when the Amended Complaint was filed. The factors will be discussed in turn:
(1) SC's mark STRICK, and Mr. Strickland's domain name (discounting the .com) are identical. This factor, and only this factor, weighs in favor of SC.
(2) SC's mark is not strong. SC's mark STRICK is a surname, taken from the founders "matronymic." (Email dated October 5, 1996, Exh. 6) In assessing the strength of a surname trademark, the Court should start from the premise that surnames, when used as trademarks, are inherently nndistinctive, i.e., weak. Scott Paper, 589 F.2d at 1231 n. 4. "A mark which is inherently weak is not entitled to protection against its use on different goods or services if it has not acquired sufficient strength or distinctiveness, sometimes referred to as 'secondary meaning,' in the market occupied by the junior user." Castle Oil Corp. v. Castle Energy Corp. 26 USPQ 2d 1481, 1488 (E.D.Pa. 1992) (emphasis added, attached as Exh. 7). Here, there is (and will be) no evidence that SC has ever made any use of the STRICK mark in the area of computer consulting, let alone enough use to be sufficient for the acquisition of secondary meaning in that market.
(3) SC's Amended Complaint states that SC's "current product line includes dry freight semi-trailers, container chassis and converter dollies." and that SC "also manufactures its own wood flooring and distributes parts for its own equipment and other manufacturer's equipment as requested by customers." (Amended Complaint, para. 9, p. 2) It is assumed that SC's trailers are expensive, and would not be a casual purchase. Thus, SC's customers would be expected to exercise reasonable care.
(4) Mr. Strickland was only able to use his domain name for a period of about 10 months prior to its suspension at SC's request. During this time there was no evidence of confusion.
(5) Mr. Strickland selected the domain name based on his long-standing nickname, and had never heard of SC. He therefore acted in good faith in his actions. As admitted by SC 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.
(Exh. 1, emphasis added.) Stated plainly, SC admits that when Mr. Strickland registered "strick.com", Mr. Strickland was not knowingly doing anything wrong. Mr. Strickland's state of mind when he registered the "strick.com" domain name was innocent. Indeed the ICANN tribunal (two judges and a professor) found that:
[Mr. Strickland] is commonly known by the domain name, and was making a fair or legitimate use of the domain name... [Mr. Strickland] was not using the domain name with intent for commercial gain to misleadingly divert consumers from [SC]. [Mr. Strickland] has ... legitimate interests in the domain name.
(Domain Name Dispute Administrative Panel Decision, p. 6, Exh. 4)
(6) There is no evidence of actual confusion, and it is inconceivable that a person looking to buy a trailer would be confused into thinking that Mr. Strickland's computer consulting business was somehow related to or sponsored by SC based solely upon the domain name.
In a case that strongly parallels this one, a District Court declined to transfer a domain name where the covetous party was a television network and the domain name owner was a computer network maintenance company:
Dissimilarity of goods and services resolves the initial interest confusion question. A trademark violation based on initial interest confusion involves the junior user capitalizing on the senior user's goodwill. The senior user's customers, at least tangentially in the market for the junior user's services, accidentally access the infringing site while in search of information on the senior user's products. Thus, relatedness of products is an important component in the analysis, even if the products need not be closely related. See Interstellar, 184 F.3d at 1111. Clearly, the instant dispute does not provide such a case. Unlikely indeed is the hapless Internet searcher who, unable to find information on the schedule of upcoming NASCAR broadcasts or "Dukes of Hazzard" reruns, decides to give up and purchase a computer network maintenance seminar instead.
The Network Network v. CBS, Inc. et al., 2000 U.S. Dist. LEXIS 4751; 54 U.S.P.Q.2D 1150 (C.D.Cal., 2000). Likewise is is "unlikely indeed" that a hapless Internet searcher who, unable to find information on SC's semi trailers, would decide to give up and purchase Mr. Strickland's computer consulting services instead.
(7) The goods are not only not competing, and they are not marketed through through the same channels of trade. Thus, to the extent SC's trailers and Mr. Strickland's computer consulting services might be marketed through a common vehicle, such as a trade show or a magazine, they would not be the same trade shows or magazine.
(8) There is no overlap in the targets of the parties marketing efforts. Mr. Strickland does not focus his sales efforts on people who buy large truck trailers, and it seems unlikely (or even inconceivable) that SC focuses its sales efforts on individuals who also purchase custom computer software or computer consulting services.
(9) There is no similarity in the function of the SC's goods and Mr. Strickland's services, and thus no relationship of the goods in the minds of the public.
(10) There are no other facts suggesting that the consuming public might expect SC to expand into Mr. Strickland's market.
Given this analysis of the relevant factors, it is plain that there is no likelihood of confusion. Mr. Strickland is therefore entitled to summary judgment on the issue of trademark infringement as a matter of law. It is submitted that the false designation of origin and state law (common-law) trademark infringement causes likewise should be decided in Mr. Strickland's favor.
There is no dilution
It is to be expected that SC will urge to this Court that the present dispute closely parallels the case of Times Mirror Magazines, Inc. v. Las Vegas Sports News LLC, 50 USPQ2d 1454 (E.D.Pa. 1999) (attached as Exh. 9), affirmed 212 F.3d 157, 54 USPQ2d 1577 (3rd cir. 2000). The present case, however, falls outside of the "Sporting News" fact pattern, as will be discussed.
It is often said (and it may be expected that SC will say) that liability Federal Trademark Dilution Act, 15 USC sec. 1125 (c) ("FTDA") obtains even in the absence of trademark confusion. The Court of Appeals for the Third Circuit, however, says:
We are persuaded that a mark not famous to the general public is nevertheless entitled to protection from dilution where both the plaintiff and defendant are operating in the same or related markets, so long as the plaintiff's mark possesses a high degree of fame in its niche market.
(Times Mirror, 54 USPQ2d at 1582.) In the present case, however, it is undisputed that SC and Mr. Strickland are not operating in the same or related markets. Semi trailers and computer consulting are not "same or related".
It is also important to bear in mind that "famous" under the FTDA is not the same as the dictionary meaning of "famous". In a case remarkably parallel to this case, Hasbro, the manufacturer of the childrens' board game "Clue," attempted to use the NSI dispute resolution policy to obtain the domain name clue.com from a computer consultant. Hasbro, Inc. v. Clue Computing, Inc., 66 F.Supp.2d 117, 52 USPQ2d 1402 (D. Mass. 1999), affirmed 2000 U.S. App. LEXIS 27856 (1st Cir. November 7, 2000). Hasbro subsequently filed the District Court action, alleging trademark infringement and dilution just as in the present case. In that case the Court of Appeals affirm's the District Court's ruling in favor of the domain name owner, saying:
the [District] court found on the merits that the Clue® mark was not famous, that Clue Computing's name did not blur or tarnish Hasbro's mark, and that in any event the equities would not justify an injunction.
(slip opinion, p. 2, attached as Exhibit 10.) A Court might well take judicial notice that Hasbro's children's game called "Clue" is "famous" in the dictionary sense of the word "famous," yet the Court of Appeals found the mark "not famous." If Hasbro's children's game "Clue" (which every American has heard of) is "not famous", then "Strick" (which most Americans have never heard of) might well not be "famous".
Finally, as mentioned in the Hasbro First Circuit opinion, a District Court considering whether or not to grant a remedy under the dilution act is obligated to consider the equities. It is submitted that on the undisputed facts, this Court may find that it would be inequitable to grant any remedy against Mr. Strickland in this case. SC comes to this court with unclean hands, as indicated by the National Arbitration Forum finding that:
On the facts presented, there was a strong feeling that this case may well be an example of reverse domain name hijacking.
(Exh. 4, pp. 5-6)
Yet another equitable factor goes against the grant of a remedy. The conduct complained of is (a) Mr. Strickland registered the "strick.com" domain name and (b) he used it for email in his business.of computer consulting. This conduct began in July of 1995. The FTDA did not, however come into force until January 16, 1996. On the present record it would be inequitable to apply the Act retroactively.
Summary judgment is requested in Mr. Strickland's favor on this cause of action. It is submitted that the state-law dilution claim may be likewise disposed of.
There is no unfair competition by Mr. Strickland
A finding of unfair competition would require, at the outset, a finding that the parties are competitors. They are not, for the reasons discussed above in connection with trademark infringement. Thus summary judgment should be rendered in favor of Mr. Strickland.
There is no cybersquatting
The Anticybersquatting Act, 15 USC section 1125(d)(B)(ii) provides that bad faith, and thus liability, "shall not be found in any case in which the Court determines that the person [here, Mr. Strickland] believed and had reasonable grounds to believe that the user of the domain name was a fair use or otherwise lawful." Here, SC admits that Mr. Strickland did not act in bad faith:
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.
(Exh. 1, emphasis added.) Summary judgment as to cybersquatting should be granted in Mr. Strickland's favor based on this admission alone.
Other factors which this Court is obligated to consider include section 1125(d)(B)(i)(II), "the extent to which the domain name consists of the legal name of the person [here, Mr. Strickland] or a name that is otherwise commonly used to identify that person." It is undisputed that Mr. Strickland has been known by the nickname "Strick" since childhood. (Strick Decl, para. 1.)
The National Arbitration Forum arbitration panel found that:
[Mr. Strickland] is commonly known by the domain name, and was making a fair or legitimate use of the domain name...
(Domain Name Dispute Administrative Panel Decision, p. 6, Exh. 4.)
Still another factor which this Court is obligated to consider is section 1125(d)(B)(i)(III), "the persons's prior use, if any, of the domain name in connection with the bona fide offering of any goods or services." It is undisputed that Mr. Strickland used the strick.com domain name in connection with the bona fide offering of his computer consulting services. (Strick Decl, para. 6.)
Yet another factor which this Court is obligated to consider is section 1125(d)(B)(i)(V), "the persons's intent to divert consumers from [SC's] online location ... ." The National Arbitration Forum arbitration panel found that
[Mr. Strickland] was not using the domain name with intent for commercial gain to misleadingly divert consumers from [SC].
(Domain Name Dispute Administrative Panel Decision, p. 6, Exh. 4.)
Summary judgment is appropriate in Mr. Strickland's favor on this cause of action.
There is no unjust enrichment
There is no evidence to show that Mr. Strickland has been enriched, let alone unjustly. Summary judgment in Mr. Strickland's favor is requested.
Motion to Exclude
Federal Rule of Evidence 408 renders evidence of settlement discussions inadmissible to prove liability.
Chief Judge Seitz believes that it is the purpose of Rule 408 to encourage settlements by shielding the parties to a settlement from liability based on ... statements made in settlement negotiations.
In re Japanese Elec. Prods. Antitrust Litig., 723 F.2d 238, 273 (3rd cir. 1983). Accord, Affiliated Manufacturers, Inc., v. Aluminum Co. of America, 56 F.3d 521 (3rd cir. 1995) (affirming discretion of District Court in excluding settlement discussions under FRE 408).
The exclusion applies to settlement efforts regarding any claim that was disputed as to either validity or amount. The reason for this Rule is of course well known: parties are unlikely to speak freely in efforts to settle legal disputes if they face the prospect of their settlement discussions being published in subsequent court papers.
In the previous forum (the National Arbitration Forum), SC offered into evidence an April 15, 1996 letter from Mr. Strickland to SC's attorney, Leonard Barkan (Exh. 3). SC attempted to use Mr. Strickland's settlement offer to show liability. It is anticipated that in this present court action, SC will likewise attempt to use Mr. Strickland's settlement offer to show liability.
On March 29, 1996, SC first threatened legal action against Mr. Strickland, and initiated settlement discussions with him. (Barkan letter, Exh. 2). Mr. Strickland's response disputed the validity of SC's claim and responded with a settlement offer. This court is requested to rule in limine that the April 15, 1996 letter is excluded from evidence.
Conclusion
It is requested that summary judgment be granted in favor of James Strickland on the counts of trademark infringement, trademark dilution, cybersquatting, unfair competition, and unjust enrichment. It is further requested that this Court rule in limine that the settlement discussions are inadmissable in evidence.
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).