Individual squatter succeeds against trademark holder

Judge Bruce Kauffman of the US District Court for the Eastern District of Pennsylvania recently handed down a decision that runs against the trend of most courts in domain name disputes. In his summary judgment opinion in Strick Corporation v James B Strickland Jr, Kauffman held that the defendant was entitled to retain the domain name '' despite the fact that the Strick Corporation holds a valid trademark in its name. The judgment upheld a prior National Arbitration Forum panel decision in Strickland's favour.

Kaufman addressed several of Strick's claims, including unfair competition and trademark dilution. He dismissed the unfair competition claim on the grounds that there would be no chance of any consumer being confused about the products or services provided by the two parties. The Strick Corporation manufactures trucks and other products for shipping goods, whereas Strickland is a computer consultant. On the dilution claim, the court held that no reasonable buyer would link Strickland's use of the name 'strick' with Strick's trademark.

Kauffman also concluded that trademark holders are not automatically entitled to all domain names that include their mark. "Any confusion that a consumer may have when reaching a defendant's web page rather than a plaintiff's site is not legally cognizable," he wrote.

Since the advent of the Internet, courts have generally ruled that individual domain name registrants are required to turn domain names that contain trademarks over to trademark holders. This decision, and several others, have reversed or at least slowed that trend.

Douglas Wood and Linda Goldstein, Hall Dickler Kent Goldstein & Wood, New York

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