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Designer Skin LLC v. S & L Vitamins, Inc., et al.
Unauthorized internet reseller of plaintiff’s products is not guilty of trademark infringement, and does not cause actionable initial interest confusion, by using plaintiff’s trademarks in meta tags of website at which plaintiff’s and its competitors’ products are sold, and in...

Strick Corporation v. James B. Strickland

162 F.Supp. 2d 372, Civ. Act. No. 00-3343 (E.D. Pa., August 27, 2001)

Court grants defendant's motion for summary judgment, dismissing the claims of unfair competition and trademark dilution advanced by plaintiff, owner of the federally registered trademark "Strick," against defendant as a result of defendant's registration of the domain name "strick.com." The Court reached this decision, in large part, because (a) the parties' respective businesses did not compete for the same customers, as plaintiff sold transportation equipment such as freight semi-trailers, while defendant sold computer consulting services, and (b) "strick" was defendant Strickland's nickname.

Plaintiff Strick Corporation manufactures transportation equipment, including freight semi-trailers, which it markets for sale under the federally registered trademark "Strick," a mark first registered in 1951.

Defendant James Strickland is a computer consultant and software developer. In 1995, defendant sought to register a domain name for use in connection with his business. Finding his surname "Strickland.com" already taken, he elected to register the domain "strick.com." "Strick" is defendant's nickname, and a name by which he is commonly known.

After plaintiff unsuccessfully attempted to acquire the strick.com domain name from defendant, plaintiff had NSI place the domain on hold. Plaintiff thereafter challenged defendant's right to the domain name in an ICANN proceeding before the National Arbitration Forum ("NAF") which upheld defendant's rights to the domain. Because "the NAF decision is not binding on this Court, which has de novo review of the matter," however, plaintiff was free to challenge defendant's conduct in an action brought in federal court. Plaintiff commenced such an action, asserting claims of common law unfair competition and federal and state law dilution.

On defendant's motion for summary judgment, the Court dismissed plaintiff's claims.

"[T]he essence of an unfair competition claim is the likelihood of [consumer] confusion." A number of factors can be analyzed in determining the likelihood of confusion. Analyzing these factors, the Court determined that consumers were not likely to be confused by defendant's use of the "strick.com" domain name to promote his computer consulting service business. In reaching this conclusion, the Court relied on the fact that: (1) plaintiff and defendant do not sell competing products, (2) consumers would not expect plaintiff, a seller of transportation equipment, to expand its business to offer the consulting services sold by defendant, (3) there was no evidence of actual consumer confusion during the 8 month period defendant operated a website at strick.com, (4) consumers will exercise a relatively higher degree of care when purchasing products from plaintiff and defendant due to the relative expense of the goods in question and therefore be less likely to be confused as to the source of those products, and (5) the Court's finding that defendant did not intend to deceive consumers into believing he was associated with plaintiff by his use of his nickname as a domain name.

Plaintiff sought to sustain its unfair competition claim by asserting that defendant's registration of the "strick.com" domain name would result in "initial interest confusion" by users who expected that name to yield plaintiff's website, instead of defendant's. Following the lead of the Chattam Int'l. Inc. v. Bodum, Inc., 2001 WL 894085 (E.D. Pa. August 7, 2001), the Court held that, given the fact that plaintiff and defendant did not sell competing goods, any "initial interest confusion" caused by defendant's use of the domain name "strick.com" was not legally cognizable. Said the Court:

As Chatam observed, "initial interest confusion is of greatest concern when products are in competition with each other." Id. at *6 (citation omitted). "Where companies are non-competitors, initial Interest confusion does not have the same consequence." Id. In any case, 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 Interact search engine to find the right one -- is not substantial enough to be legally significant." Id. at *6-*7 (citing Hasbro Inc., 66 F.Supp. 2d at 125). It is clear that "internet surfers are inured to the false starts and excursions awaiting them" and are "unlikely to be dissuaded, or unnerved" when, "tak[ing] a stab at what they think is the most likely domain name for a particular website" guess wrong and bring up another's web page. Id. at *7 & n., 17 (citing Checkpoint Sys., Inc. v. Check Point Software Techs., Inc., 104 F.Supp. 2d 427, 462 (D.N.I. 2000) and The Network Network v. CBS, Inc., 54 U.S.P.Q. 2d 1150, 1155 (C.D. Cal. 2000)). The Court agrees with the reasoning of the district court in Chatam, and finds that any confusion that a consumer may have when reaching Defendant's web page rather then Plaintiff's site is not legally cognizable.

The Court also rejected plaintiff's dilution claims. Assuming, for the purpose of its decision, that plaintiff's mark was famous, and that defendant had used it in commerce, the Court held that plaintiff's federal dilution claim failed because plaintiff could not establish that "defendant's use dilutes the mark's distinctive quality by lessening the capacity of plaintiff's mark to identify and distinguish goods and services," a prerequisite to a dilution claim. The Court held that no blurring occurred as a result of defendant's use because consumers were not likely to link plaintiff and defendant together, given the disparity between the products they sold. Thus, according to the Court, consumers were not likely to attribute defendant's commercial activities to plaintiff.

The Court also rejected plaintiff's claim that defendant's use caused the necessary dilution by preventing plaintiff from using its mark as a domain name for a website. Noting that other "courts have rejected this theory" the court stated that "it is clear that nothing in trademark law requires that title to domain names that incorporate trademarks … be provided to trademark holder"… "trademark law does not support such monopoly."

Moreover, the Court noted that plaintiff did indeed have a presence on the web at several other domains including stricktrailer.com and strickcorp.com, was easy to find via search engines, and "any inconvenience to an Internet user searching for plaintiff's website is trivial."

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