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Trademark rights don’t automatically entitle the holder to the rights to an Internet domain name that incorporates the trademark, a federal judge has ruled. In his 15-page opinion in Strick Corp. v. Strickland, U.S. District Judge Bruce W. Kauffman of the Eastern District of Pennsylvania rejected the argument that defendant James B. Strickland should be barred from operating the “strick.com” Web site after finding that Internet users aren’t likely to be confused. Strickland is an independent computer consultant and software developer. In July 1995, when he wanted to set up an Internet Web site, he learned that the domain name strickland.com was already registered to someone else, but that strick.com was available. Since he had gone by the nickname “Strick” since childhood, he opted to use it for a site to communicate with his clients. Eight months later, Strick Corp., a tractor-trailer manufacturer, contacted Strickland to see if he would sell the domain name. When he refused, Strick Corp. asked Network Solutions Inc. to place the domain name “on hold,” making it unavailable for anyone. The hold stayed in place for three years, but in January 2000, NSI announced that due to a policy change, it would restore domain names that were on hold unless the original complainant had filed a lawsuit against the domain name owner or brought a challenge before the Internet Corp. for Assigned Names and Numbers. In May 2000, Strick Corp. filed an ICANN challenge, selecting the National Arbitration Forum to resolve the dispute. The NAF panel ordered that the domain name be released from the hold with full use restored to Strickland. But Strick Corp. didn’t give up. In June 2000, it filed suit in U.S. District Court accusing Strickland of unfair competition and trademark dilution. Now Judge Kauffman has granted summary judgment in Strickland’s favor on both claims. Kauffman found that Strick Corp. could never prove its unfair competition claim since it couldn’t show that consumers would be confused. “There is no similarity of function between plaintiff’s goods and defendant’s services. Nor do the parties suggest that there is any relationship in consumers’ minds between transportation equipment and computer software and consulting services,” Kauffman wrote. “Likewise, the parties do not contend that consumers are likely to expect plaintiff’s expansion into computer software and consulting. Nor would an ordinary consumer be likely to conclude that plaintiff’s products and defendant’s services share a common source, affiliation, connection or sponsorship.” Kauffman said consumers “must use at least ordinary caution in making purchasing decisions” and that courts presume that consumers use more care when purchasing important or expensive products. “Here, customers are likely to be discriminating when purchasing transportation equipment or computer software. Purchasing transportation equipment or hiring a computer consultant, not insignificant financial transactions, would require a high degree of care and attention from a consumer,” Kauffman wrote. Kauffman also found that Strickland wasn’t setting out to confuse anyone, but instead that he used his childhood nickname in choosing the name for his site. Strick Corp. can’t show any “actual confusion,” Kauffman found, since Strickland used the site for eight months without evidence of confusion. Turning to the trademark dilution claim, Kauffman found that Strick Corp.’s claim was one of “initial interest confusion.” Kauffman rejected the claim, citing the reasoning of Senior U.S. District Judge Edmund V. Ludwig’s recent opinion in Chatam International Inc. v. Bodum Inc. in which Ludwig ruled that the manufacturer of Chambord, a liqueur, has no right to the chambord.com site currently being used by a manufacturer of a coffee maker that also uses the Chambord trademark. Kauffman concluded that “any initial confusion that arises from defendant’s use of his strick.com domain site, specifically, ‘that consumers will realize they are at the wrong site and go to an Internet search engine to find the right one’ — is not substantial enough to be legally significant.” Like Ludwig, Kauffman concluded that “any confusion that a consumer may have when reaching defendant’s Web page rather than plaintiff’s site is not legally cognizable.” NO BLURRING Kauffman also rejected Strick Corp.’s argument that Strickland was committing “dilution by blurring.” “Dilution by blurring imputes some mental association between the two trademarks. Blurring creates the possibility that the mark will lose its ability to serve as a unique identifier of the plaintiff’s product, causing the public to no longer associate the plaintiff’s famous mark with its goods or services,” Kauffman wrote. “However, if a reasonable buyer is not at all likely to link the two uses of the trademark in his or her own mind, then there can be no dilution.” Strick Corp. also argued that without the strick.com domain name, it is “completely blocked” from the Internet because consumers searching for its products are likely to begin by typing “www.strick.com.” When they reach Strickland’s site, they said, they are likely to mistakenly believe that Strick Corp. does not have a Web site. But Kauffman said “courts have rejected this theory, noting that trademark law requires reasonableness on the part of consumers.” Although Internet surfers may be inconvenienced, Kauffman found that they could easily find Strick Corp.’s “readily visible presence on the Internet” by using a search engine where they would be pointed to stricktrlr.com, strck.com, stricktrailer.com, strickcorp.com, and strickparts.com. In his final paragraphs, Kauffman found that “nothing in trademark law requires that title to domain names that incorporate trademarks or portions of trademarks be provided to trademark holders.” To hold otherwise, he said, “would create an immediate and 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 create such property rights-in-gross as a matter of dilution law.”

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