James B. Strickland
File number NAF FA0094801
This is a reverse domain name hijacking case.(1) The Complainant, a company called "Strick" with millions of dollars in sales(2), a company that is one of dozens of businesses called "Strick"(3), slept through the first several years of the Internet(4) and now wishes it had had the foresight to register the domain name strick.com back when it was still available. Instead Respondent, a man named Strickland, whose nickname is "Strick", registered it and began using it in his software consulting business. The Complainant, not content with the several other domain names it owns incorporating the word "Strick"(5), would not give up. Despite the total absence of any bona fide claim of trademark infringement or any other cause of action, Complainant chose in 1996 to misuse the NSI domain name policy to induce NSI to place Mr. Strickland's domain name "on hold". The loss of the domain name caused great harm to Mr. Strickland and to his business. (Strickland Affidavit para. 6.)
Complainant has not asked that Mr. Strickland cease and desist from use of the name "Strick", but demands solely that he give up the strick.com domain name. This belies any argument by Complainant that it has any bona fide claim of trademark infringement, and gives mute testimony that what is really going on is simply that the Complainant covets the domain name.
Complainant was repeatedly urged and invited, on the telephone and in writing, to detail what there was about Mr. Strickland's conduct that supposedly infringed any legal rights of Complainant, one instance of which was a letter dated October 18 1996. (Exhibit J to Complaint.) Complainant's conspicuous silence in the face of such invitations also contradicts any argument by Complainant that it has any bona fide claim of infringement against Mr. Strickland.
It is requested not only that this Panel rule in favor of the Respondent, Mr. Strickland, ordering that the strick.com domain name be restored to his use, but that this Panel also declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Request that inadmissable matter be stricken. As a preliminary matter, respondent James Strickland requests that certain inadmissable matter be stricken from the Complaint and from the Record.
The impropriety of inclusion of such matter in the Complaint has been recognized in this venue:
While there is evidence in the submission by Respondent of settlement negotiations, these appear to be legitimate settlement negotiations which should be excluded from the evidence considered by this Panel as would be the case in all or at least most courts of law in the United States and Canada.
(CRS Technology Corp. v. Condenet, Inc., http://www.arbforum.com/domains/decisions/93547.html .)
Complainant has consented to the jurisdiction of the United States Court for the Eastern District of Pennsylvania. Federal Rule of Evidence 408, binding upon that Court, renders evidence of settlement discussions inadmissible to prove liability. "In furtherance of the public policy of encouraging settlements and avoiding wasteful litigation, Rule 408 bars the admission of most evidence of offers of compromise and settlement." Trebor Sportswear Co. v. The Ltd. Stores, Inc., 865 F.2d 506, 510 (2d Cir. 1989). 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.(6)
The very first communication between the parties originated from the Complainant. It was a letter dated March 29, 1996 from Complainant's lawyer to Mr. Strickland. (Exhibit E to the Complaint.) The letter, on the letterhead of attorney Leonard Barkan, asserted trademark rights against Mr. Strickland and stated that the Complainant wished to "resolve this matter amicably." (Id.) The letter invited Mr. Strickland to respond, and ended with the threat that if Mr. Strickland did not give up the strick.com domain name, Mr. Barkan would "advise the [Complainant] that [it] should assert all of [its] rights available under and pursuant to the NSI policy as well as pusuant to legal doctrine." (Id.)
Mr. Strickland responded by a letter dated April 15, 1996. (Exhibit F to the Complaint.) The letter is largely self-explanatory; Mr. Strickland said he disputed Mr. Barkan's claim of infringement, and said that he, too, "would like to settle this matter amicably." (Id.) He stated that he had been using the domain name "extensively ... for nearly a year" to exchange "information with clients and colleagues." (Id.) He said that to give up the domain name he would need to "notify [his] friends and colleagues", the cost of which he estimated at $10,000. (Id.)
Complainant engaged in further settlement discussions by an email message dated October 14, 1996. (Exhibit I to the Complaint.) The message made a counter-proposal and inquired whether the parties could "work out a solution." (Id.)
Importantly, the communication from Mr. Strickland was an offer of compromise. It communicated that the claim was disputed as to validity. Complainant is urging that this communication be admitted into evidence before this Panel to prove liability under the UDRP.
In US federal court, such communications would be inadmissable and, if contained in a court paper, would be instantly stricken from such a court paper.(7)
Regrettably, Complainant has chosen to recount these discussions in the Complaint. (Complaint, para. 11.) Complainant states:
As seen in Exhibit F, Respondent offered to sell the "STRICK.COM" domain name to [Complainant] for $10,000 dollars [sic].
(Id.) Complainant's characterization of the settlement offer is misleading at best; Mr. Strickland did not offer to "sell" the domain name for $10,000, but for the cost of "notify[ing] friends and colleagues", merely estimated to be $10,000. (Exhibit E.)
But even if Complainant had characterized the settlement offer fairly, its mention is still improper when offered to attempt to prove liability. If there were any doubt as to the purpose for which Complainant seeks to introduce this settlement offer into evidence, the doubt is eliminated by the closing sentence of paragraph 11 of the Complaint: "Such activity by Respondent [the compromise offer] is tantamount to cybersquatting."
The Complaint itself negates any effort by the Complainant to characterize the communications of Exhibit E as anything other than settlement discussions. At paragraph 10, Complainant admits it was "seeking an amicable resolution between the parties." At paragraph 13, Complainant admits it "attempted to negotiate a satisfactory settlement with Respondent." At paragraph 14, the Complaint describes the settlement counter-offer made by the Complainant.
Federal Rule 408 allows a loophole for a party seeking to introduce settlement discussions into evidence, namely that if the claim is not disputed as to validity or amount, then Rule 408 does not apply. But on the record provided in the Complaint and its exhibits, there can be no doubt that the claim was disputed both as to validity and amount. Mr. Strickland's letter of Exhibit E offers legal arguments disputing the claim, as does the letter of Mr. Strickland's counsel, Exhibit J to the Complaint.
Complainant admits explicitly that it and Mr. Strickland were "attempt[ing] to negotiate a satisfactory settlement". (Complaint, para. 13.) Settlement discussions are inadmissable in the Court selected by Complainant. Most importantly, paragraph 11 should be stricken from the Complaint. This Panel should also refuse any efforts by Complainant to use settlement discussions to attempt to prove liability.
Specific responses to the statements and allegations contained in the Complaint.
Mr. Strickland will now respond in turn to the numbered paragraphs of the Complaint.
1. Mr. Strickland had never heard of Complainant when he registered his domain name, and to this day has no independent knowledge of Complainant's business. (Affidavit, para. 3.) Mr. Strickland first heard of Complainant when he received the letter dated March 29, 1996 from Complainant's lawyer. (Affidavit, para. 5.) Mr. Strickland lacks the financial resources to independently investigate whether Complainant's claims as to its size and product line are true. (Affidavit, para. 8.)
2. Mr. Strickland admits that Complainant's trademark registration number 906,145 claims a date of first use of April 24, 1936, but lacks the financial resources to independently investigate whether Complainant's claims as to the date of first use are true. (Id.)
3. Mr. Strickland questions the claimed extensiveness of Complainant's supposedly extensive advertising, marketing and promotion of its "STRICK" trademark, trade name and service mark, as he had never heard of Complainant until receiving the March 29, 1996 letter from Complainant's lawyer. Mr. Strickland lacks the financial resources to independently investigate Complainant's claims regarding the number of vehicles supposedly in use in the United States bearing the "STRICK" name. (Id.)
4. Mr. Strickland questions the claimed "famousness" of Complainant's name, as he had never heard of Complainant's name until receiving the March 29, 1996 letter from Complainant's lawyer. Mr. Strickland lacks the financial resources to independently investigate Complainant's claims regarding the activities and customers of Complainant. (Id. at paras. 4 and 8.)
5. Mr. Strickland admits that Complainant has a web site at www.stricktrlr.com which promotes the goods and services of Complainant. Mr. Strickland also notes that Complainant has web sites at www.strck.com, at www.stricktrailer.com, at www.strickcorp.com, and at www.strickparts.com, as well as web sites at www.trailerlink.com and www.trailerlink.net, all of which promote the goods and services of Complainant. (Affidavit para. 7.)
6. Mr. Strickland is aware of complainant's claim that its use of the mark "STRICK" in connection with its goods and services is "unique" to Complainant, but questions whether this claim by Complainant is true, given the dozens of other businesses listed by Dun & Bradstreet as using the name "STRICK", shown in Exhibit 2 hereto. If a mark is non-exclusively used by many businesses then the complainant should not be able to gain possession of the corresponding domain name, Tenenhaus v. Telepathy, Inc., http://www.arbforum.com/domains/decisions/94355.htm .
Mr. Strickland is aware of complainant's claim that its use of the mark "STRICK" is "arbitrary", but questions whether this is true given the statement by the CEO of Complainant that "Strick is [his] matronymic name." (Exhibit 4 hereto.) It appears that both Complainant and Respondent can point to their own families in defense of their choice of business name.
7. Mr. Strickland admits that according to the web site of the United States Patent and Trademark Office, the trademark registrations listed by Complainant are in force.
8. Mr. Strickland admits that according to the web site of NSI, Complainant is the owner of the domain names strck.com, stricktrailer.com, stricktrlr.com, strickcorp.com, and strickparts.com. Mr. Strickland also notes that according to that web site, Complainant also owns trailersource.net, trailerlink.com, and trailerlink.net. (Affidavit para. 7.)
9. Mr. Strickland admits that he is the owner of the domain name strick.com.
10. Mr. Strickland admits that by a letter dated March 29, 1996, Complainant's attorney contacted Respondent regarding the strick.com domain name. Mr. Strickland, however, denies Complainant's claim that Complainant was seeking an "amicable" resolution between the parties. Instead, it appears to Mr. Strickland that Complainant's notion of "amicable" was that Mr. Strickland should give up the domain name regardless of the harm it would cause to Mr. Strickland.
11. Mr. Strickland admits that he responded to Complainant's counsel's letter with a letter dated April 15, 1996, a copy of which is attached to the Complaint as Exhibit F. Mr. Strickland denies that he offered to sell the "STRICK.COM" domain name to Complainant for $10,000. On the contrary, Mr. Strickland points out that the letter says instead that he "would be willing to assign it to [Complainant] for what it would cost [him] in fees, materials and time to notify [his] friends and colleagues." The letter says further that he "estimated this cost at $10,000." (Exh. F.) Mr. Strickland did not initiate contact with Complainant and did not offer to sell the domain name; rather, Complainant initiated communications and offered to buy it. It has been held that a legitimate interest in a domain name does not become illegitimate once another party offers to purchase the domain name. Car Toys, Inc., v. Informa Unlimited, Inc., http://www.arbforum.com/domains/decisions/93682.htm , General Machine Prods. Co. v. Prime Domains, http://www.arbforum.com/domains/decisions/92531.html , Interep National Radio Sales, Inc. v. Internet Domain Names, Inc. , http://arbiter.wipo.int/domains/decisions/html/d2000-0174.html .
Mr. Strickland categorically denies that his actions were or are "tantamount to cybersquatting."
12. Mr. Strickland admits that on about August 13, 1996, Complainant filed a complaint with NSI, representing to NSI that Mr. Strickland was an "infringer" of Complainant's "legal rights." (Copy attached as Exhibit 3.) Mr. Strickland believes this representation to NSI to be false.
13. Mr. Strickland admits that by a letter dated September 30, 1996, Complainant directed NSI to postpone its domain name cutoff plans by fourteen days, and that NSI complied with Complainant's direction.
14. Mr. Strickland admits that Complainant sent the e-mail message dated October 14, 1996, attached as Exhibit I.
15. Mr. Strickland admits that he declined to give up the strick.com domain name. Mr. Strickland admits that his counsel sent the letter dated October 18, 1996, attached as Exhibit J.
16. Mr. Strickland admits that NSI sent the letter dated October 23, 1996, attached as Exhibit K. He further admits that in view of the imminent loss of the ability to use the domain name strick.com, he was forced to register a different domain name, and selected tibertech.com. He admits that he has continued to pay the NSI annual fees for the strick.com domain name and that NSI has continued to keep the domain name "on hold", unavailable for his use.
17. Mr. Strickland admits that the first six letters of strick.com are "strick" and that Complainant has trademark registrations for "STRICK". Mr. Strickland categorically denies that mere text identicality between a domain name and a trademark "is likely to cause confusion, mistake or deception among the trade and public" under the trademark laws. Mr. Strickland believes that to determine whether "confusion, mistake or deception" under the trademark laws is taking place, it would be necessary to look at the goods or services offered by the two parties. He 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.
18. Mr. Strickland categorically denies that his adoption and use of strick.com effectively appropriates Complainant's trademark, trade name and service mark, or represents to clientele, to the trade or public, that his web site offered in connection with strick.com is offered under the sponsorship of or in affiliation with Complainant.
19. Mr. Strickland categorically denies that his adoption and use of the domain name strick.com dilutes the distinctive quality (if any) of Complainant's trademark, service mark and trade name. Mr. Strickland notes that there are dozens of businesses using the name "STRICK" and thus that to the extent there is anything to dilute, the dilution has already happened and is already happening regardless of any actions by Mr. Mr. Strickland.
20. Mr. Strickland is aware of Complainant's allegation that he "has no legitimate rights in the domain name strick.com, other than to trade upon the established good will of Complainant." Mr. Strickland categorically denies this allegation, noting that "Strick"is the first syllable of his last name, and that he has had the nickname "Strick" since childhood.
21. Mr. Strickland categorically denies Complainant's allegation that his adoption and use of the strick.com domain name is in bad faith and otherwise denies the allegations of paragraph 21.
22. Mr. Strickland admits that some customers and prospective customers searching for Complainant on the Internet will intuitively type in strick.com searching for Complainant's web page. He notes, however, that in this day and age any customer or prospective customer will also know to try using a search engine. He notes further that it is quite easy to find Complainant's web page by typing in "Strick" at a search engine. (Affidavit para. 11.) A search for "Strick" at www.goto.com, for example, yields Complainant at the third "hit." (Exhibit 5.) A search at www.google.com finds Complainant at the ninth "hit". (Id.) A search at www.lycos.com finds Complainant at the fifth "hit". (Id.)
Mr. Strickland admits Complainant's allegation that customers and prospective customers typing in "STRICK.COM" will not find Complainant online, instead finding a "dead" page. He notes further that this problem is not Mr. Strickland's fault but is of Complainant's own making, a natural and expected consequence of Complainant having induced NSI to place the domain name "on hold".
Mr. Strickland also admits that such customers and prospective customers may stop searching for Complainant online, resulting in lost customers, lost sales and a loss of reputation. He notes that this, too, is not Mr. Strickland's fault but is a problem of Complainant's own making, a consequence of Complainant having induced NSI to place the domain name "on hold". He also notes that in this day and age, customers and potential customers know to use search engines and can quite readily find Complainant online.
Any and all bases for the Respondent (domain name owner) to retain registration and use of the disputed domain name.
Mr. Strickland was given his surname "Strickland" by his parents. (Strickland Affidavit para. 1.) He was given the nickname "Strick" as a child and has used it continuously since then. (Id.) It should be noted that as such, he has been commonly known by the domain name (omitting the ".com" portion).
Mr. Strickland makes a living as a computer consultant and software developer, and did so in 1995. (Id. at para. 4.) In July of 1995, Mr. Strickland decided to register an Internet domain name for his business. He discovered that someone else had already registered strickland.com, but found that strick.com was still available, so he registered it. (Id. at para. 2.) It should be noted that before any notice to Mr. Strickland of the dispute, he was using the domain name in connection with a bona fide offering of his computer consulting and software development services. (Id. at para. 4.)
In 1995, and indeed to this day, registration of Internet domain names was and is basically "first-come, first-served". If Complainant 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. (Affidavit para. 9.)
Harvard University obtained its harvard.edu domain name in 1985. (Id. at para. 10.) IBM obtained its ibm.com domain name in 1986. (Id.) The Complainant has never explained why, if the strick.com domain name was so important to it, it did not simply register the domain name some time between 1986 and 1995. (Id.)
Mr. Strickland registered strick.com in July of 1995 and immediately began using it to communicate with clients and potential clients of his computer consulting and software development business. (Affidavit para. 2.)
Almost a year later, a letter arrived from Complainant's lawyer demanding that Mr. Strickland hand over the strick.com domain name. (Affidavit para. 5.)
It is particularly significant that Complainant admits its actions toward Mr. Strickland were not the result of normal trademark policing and trademark enforcement. Instead, Complainant admits that what prompted it to attempt to gain possession of strick.com was an inquiry from a customer asking when Complainant would activate a web site. (Exhibit 3.) This makes quite clear that there was and is no bona fide claim of trademark infingement.
This time gap of almost a year between when Mr. Strickland registered the strick.com domain name and when Complainant first contacted Mr. Strickland also belies any bona fide claim of trademark infringement.
It is also particularly significant that Complainant admits that Mr. Strickland's state of mind was innocent at the time he registered strick.com. Complainant stated to NSI:
It appears to us that [Mr. Strickland] has unknowingly usurped something that is of value to us and not to him ...
(Exhibit 3, page 1, emphasis added.) It is also important to take note of Complainant's conspicuous silence when it was invited to explain what conduct of Mr. Strickland supposedly infringed Complainant's rights:
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 think counts as trademark infringement, you should let me know and I would look into it. You have not taken me up on that offer.
(Exhibit J, page 1.) There is simply nothing in the Complaint or in the record to support any allegation that Mr. Strickland is or was infringing any legal rights of Complainant.
The relief requested by Complainant. The requested relief is transfer of the strick.com domain name from Mr. Strickland to Complainant. Yet the record shows dozens of other businesses named "Strick". It would be a manifest injustice for this Panel to select Complainant, among dozens of others, as the supposedly deserving recipient of the coveted domain name. Complainant has said nothing to explain why it, among the other companies called "Strick", is supposedly uniquely entitled to receive the domain name.
Request for finding of bad faith. The Rules provide that under certain circumstances the Panel "shall" (not "may") "declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding." The Panel is required to so declare if it "finds that the complaint 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."
It is apparent from the record that the Complainant knew or should have known that it had no basis for bringing this action. To present a good-faith challenge under the UDRP, the Complainant would have to have a good-faith belief that Mr. Strickland "registered" the domain name "in bad faith". And indeed Complainant, by its attorney, signed a certification that Complainant believed this to be true. But the certification is contradicted by Complainant's previous statement to NSI:
It appears to us that [Mr. Strickland] has unknowingly usurped something that is of value to us and not to him ...
(Exhibit 3, page 1, emphasis added.) Mr. Strickland does not, of course, know exactly what the explanation or excuse is for Complainant's certification being in such direct contradiction to its actual belief regarding Mr. Strickland's state of mind. But regardless of the explanation or excuse, the fact is that Complainant actually believes that Mr. Strickland's actions were "unknowing", yet by filing this Complaint was representing (apparently falsely) that it believed Mr. Strickland registered the domain name "in bad faith". In doing so, Complainant brought its Complaint in bad faith and abused this administrative proceeding.
There are other strong indications that Complainant brought its Complaint in bad faith. Nothing in the Complaint or in the record shows any actual conduct that could possibly show infringement of legal rights of the Complainant, and indeed Complainant was repeatedly invited to explain what conduct could possibly show such infringement yet was silent in response. (Exhibit J.)
Nothing in the Complaint or in the record gives even the slightest evidence that Mr. Strickland registered the domain name "primarily for the purpose of selling the domain name registration to the Complainant", and indeed this is negated by the admission in Exhibit 3.
Nothing in the Complaint or in the record gives even the slightest evidence that Mr. Strickland registered the domain name "in order to prevent [the Complainant] from reflecting the mark in a corresponding domain name," and indeed this is negated by the admission in Exhibit 3.
Nothing in the Compliant or in the record gives even the slightest evidence that Mr. Strickland "engaged in a pattern of ... conduct" regarding domain names.
Nothing in the Complaint or in the record gives even the slightest evidence that Mr. Strickland ever "intentionally attempted to attract, for commercial gain, Internet users to [his] web site ... by creating a likelihood of confusion with the complainant's mark ..."
The utter absence of any hint of evidence as to these indicia of bad faith on the part of Mr. Strickland shows that the Complaint itself was brought in bad faith.
Procedural matters. The law firm of Oppedahl & Larson LLP is authorized to act for Mr. Strickland in this proceeding. The firm's postal address is P O Box 5068, Dillon, CO 80435-5068, email address is firstname.lastname@example.org, telephone number is 970-468-6600, and telefax number is 970-468-0104. The firm does not consent to service of legal documents via email or fax except by prior written arrangement. Mr. Strickland's name is James B. Strickland, Jr., his postal address is P.O. Box 1836, Tarpon Springs, FL 34689-1836, his email address is email@example.com, and his telephone number is 727-562-5599. Mr. Strickland has no fax number. Mr. Strickland does not consent to service of legal documents via email except by prior written arrangement, and in any event all communications in this proceeding should be with Oppedahl & Larson LLP. Communications directed to Respondent should be sent to Oppedahl & Larson LLP, to the attention of Carl Oppedahl. The preferred medium is overnight courier delivery of signed paper documents, directed to the above post office box (via Express Mail). Respondent elects to have the dispute decided by a three-member panel. The candidates are Jessica Littman, Milton L. Mueller, and Michael Froomkin. We understand that Prof. Mueller may be reached through WIPO and that Profs. Littman and Froomkin may be reached through Disputes.org/eResolution Consortium. The only proceeding known to Mr. Strickland that has been commenced or terminated in connection with or relating to strick.com is the NSI proceeding initiated in 1996 by Complainant. A copy of this Response has been sent or transmitted to the Complainant by email at firstname.lastname@example.org, and by US Postal Service at Arthur H. Seidel, Seidel, Gonda et al, 2 Penn Center - suite 1800, Philadelphia, PA 19102-1786. The attached Affidavit contains the Respondent's certification required by the Rules.
Oppedahl & Larson LLP
P O Box 5068
Dillon, CO 80435-5068
Attorneys for Respondent James B. Strickland, Jr.
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).
2. A Dun & Bradstreet report giving Complainant's annual sales as $220 million is attached as Exhibit 1.
3. Attached as Exhibit 2 are some four dozen Dun & Bradstreet reports on other businesses called "Strick".
4. Complainant admits that its competitors "were quicker than we were in recognizing this trend and are selling trailers and trailer parts .. through a web site that identifies them." (Exhibit 3.) It admits that "Frankly, we started this project when our customers wanted to know when STRICK.COM would be activated." (Id.)
5. Complainant admits to ownership of several domain names (Complaint, para. 8) and indeed owns other domain names in addition to those disclosed in its Complaint. (Affidavit, para. 7.)
6. Likewise, Pennsylvania state court evidence rules (Pa. R. E. 408) likewise provides that
conduct or statements made in compromise negotiations is not admissible to prove liability for or the validity of a claim or its amount.
7. The problem of a complainant wrongly attempting to introduce domain name dispute settlement negotiations into evidence was also recognized in Motorola, Inc. v. NewGate Internet, Inc., http://arbiter.wipo.int/domains/decisions/html/d2000-0079.html at footnote 4.