James Strickland used the domain name strick.com to communicate
with clients in his role as an independent computer consultant and
software developer. He said he chose the domain name back in July
1995 due to the unavailability of strickland.com, and because he
had been known since childhood as ‘Strick’.
Eight months after registering the name, he was contacted by the
US tractor and trailer manufacturers Strick Corporation, asking to
buy the domain name from Mr Strickland.
Upon his refusal to sell the domain name, Strick Corp.
successfully applied for the domain name to be put on hold and made
unavailable for use by any person. This continued until January
2000 when a policy change meant that any domain name on hold where
the complaining party had not yet commenced legal proceedings or an
ICANN arbitration hearing would be taken off the holding list.
This prompted Strick Corp. to commence ICANN arbitration
proceedings in the National Arbitration Forum (NAF) in May 2000
where it was unsuccessful in obtaining the domain name from Mr
Strickland.
Strick Corp. then filed a lawsuit in the US Courts, arguing that
Mr Strcikland’s activities represented unfair competition and that
his use of the strick.com name amounted to trade mark dilution.
In rejecting Strick Corp.’s arguments, Judge Bruce W. Kauffman
ruled that, since there was no similarity between Strick Corp.’s
commercial activities of selling transportation equipment, and Mr.
Strickland’s computer services business, then there was no
likelihood that customers would be confused.
The judge also ruled that in originally registering the domain
name, Mr Strickland’s intention was not to confuse Strick Corp.’s
customers. He was merely using his childhood nickname as a name for
his web site.
In his opinion, the judge stated:
“Nothing in trade mark law requires that
title to domain names that incorporate trade marks or portions of
trade marks be provided to trade mark holders.”
He added that if this were not the case then the courts:
“...would create an indefinite monopoly to
all famous marks holders on the internet, by which they could lay
claim to all .com domain names which are arguably ‘the same’ as
their mark. The court may not produce such property rights in gross
as a matter of dilution law”.
