Trade mark holders won’t always win domain name disputes

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”.