Strick Corp. v. Strickland, 162 F.Supp.2d 372 (E.D. Pa. 2001) (full-text).
Factual Background Edit
Defendant James Strickland, an independent computer consultant and software developer, domain name registration “strick.com” and used it for his business. Defendant asserted that he chose “Strick” because it has been his nickname since childhood and “strickland.com” was already registered. Plaintiff, a manufacturer of transportation equipment, under the mark STRICK, attempted to obtain the “strick.com” domain name by filing a UDRP complaint against defendant. The UDRP panel, however, found for defendant.
Trial Court Proceedings Edit
Plaintiff then brought this suit alleging state and federal dilution and unfair competition. On cross-motions for summary judgment, the court granted defendant’s motion on plaintiff’s unfair-competition and dilution claims.
As to plaintiff’s unfair-competition claim, the court held that defendant’s use of “strick.com” did not create a likelihood of confusion, primarily due to the substantial differences between the parties’ goods and services and the degree of care exercised by consumers in purchasing them. Consumers accidentally landing on defendant’s website would not likely conclude that plaintiff’s products and defendant’s services shared a common source, affiliation, or sponsorship. Rather, consumers would realize they were at the wrong website and use an Internet search engine to find the correct site. In short, the court held that any initial-interest confusion arising from defendant’s use of “strick.com” was not substantial enough to be actionable.
Regarding plaintiff’s dilution claims, it argued that without the “strick.com” domain name, it was “completely blocked” from the Internet. Plaintiff asserted that consumers searching for its products on the Internet were likely to begin by typing “strick.com,” and when they reached defendant’s site, they were likely to believe that plaintiff did not have a website, thus diminishing the capacity of plaintiff’s mark to identify and distinguish its goods on the Internet. The court noted that other courts have rejected the same theory because it would give famous mark holders a monopoly to all domain names that were arguably “the same” as their own marks. In addition, any inconvenience experienced by Internet users trying to access plaintiff’s website was “trivial.” Finally, the lack of ownership of the “strick.com” name neither foreclosed plaintiff’s web presence nor use of its trademarks on the Internet. Indeed, plaintiff operated several websites at a variety of “strick”-formative domain names such as “stricktrailer.com,” and searches on several popular Internet search engines returned plaintiff’s websites as the first or second listing in the search results.
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