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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...

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Homer TLC, Inc. v. Green People

Claim Number FA0508000550345 (NAF October 25, 2005)

In this domain name dispute resolved in accordance with the Uniform Domain Name Dispute Resolution Policy ("UDRP") the Panel refused to direct Respondent Green People to transfer the domain name Home Depot, at which Respondent operated a "protest site," to Complainant, owner of the famous "Home Depot" trademark.  Rejecting the majority view, the Panel found that the disputed domain was neither identical nor confusingly similar to Complainant's mark because it included the pejorative term "sucks" in addition to Complainant's trademark.  The Panel further held that Respondent had a legitimate interest in this domain, which had not been registered in bad faith, because Respondent had used the domain for seven years as the home of a web site critical of Home Depot.  The Panel accordingly found that Complainant had failed to establish its entitlement to relief under the UDRP, and denied its complaint.

Complainant Homer TLC Inc. owns the famous "Home Depot" trademark and numerous variants thereof which it has registered both in the United States and abroad.  Complainant has used the "Home Depot" mark since at least 1979 to promote its business, which includes the sale of building materials to the public.  Complainant sells its products at both its web site, Home, and over 1900 retail stores operated in the United States, Mexico and Canada.

Respondent Green People is an entity devoted to the promotion of "eco-friendly" products.  From 1998 until April 2005, Respondent and a related entity, Organic Consumers Education Fund, operated a "protest site" at the "Home Depot" domain.  Respondent's site was critical of Complainant's allegedly "eco-unfriendly business practices and [alleged] sale of old growth lumber" and contained the phrases "Home Depot Sucks" and "Home Depot Sucks for Sourcing and Selling Old Growth Lumber."  Respondent's site also contained a series of links to the web sites of similarly minded not-for-profit organizations, at which were allegedly conducted commercial activities designed to raise funds for the organizations in question.

For a four month period in 2005, Respondent removed its protest site from Home Depot, which it instead "pointed" to a web site Respondent operated at Green  This second site contained a directory of businesses from which consumers could purchase "eco-friendly" products.  Many of these products were alternatives to similar merchandise offered for sale by Complainant.  Respondent neither sold these products itself, nor profited directly from their sale by the third parties identified on its site.  Respondent did, however, receive fees from such third parties for posting "specialized listings" of their businesses on the Green site.

According to Respondent, it removed the protest site at the request of the Rainforest Action Network, which allegedly made such a request to assist in its negotiations with Complainant concerning the adoption of more eco-friendly policies.  When Complainant commenced this proceeding, Respondent reposted its protest site to the Home Depot domain, which it no longer pointed to Green

To prevail in a UDRP proceeding, a Complainant must make a three part showing -- it must demonstrate that the domain name at issue is identical or "confusingly similar" to Complainant's trademark; that Respondent has no "legitimate interest" in the domain; and that Respondent registered and is using the domain in bad faith.

The Panel found that Complainant failed to establish any of these elements.  Rejecting the majority view, the Panel held that Home Depot was not "confusingly similar" to Complainant's "Home Depot" trademark.  Quite the contrary, the inclusion of the pejorative "sucks" made it readily apparent that the source of the disputed domain was someone other that Complainant.  Said the Panel:

The term "sucks" is sufficient to distinguish the disputed domain name from Complainant's THE HOME DEPOT mark. 

*          *          *

The logic of Panels who feel non-English speakers will misunderstand the meaning of the word "sucks" escapes this Panel.  "Sucks" is a pretty short word and it isn't a compliment.  Considering most beginning linguists learn curse words first, it is likely anyone with any command of the English language knows "sucks" doesn't have a good connotation.

The Panel also held that Respondent had a legitimate interest in the domain by virtue of its use thereof for a seven year period as the home for a "protest site."  UDRP Par. 4(c)(iii) permits a Respondent to continue to use a disputed domain when "[Respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."  Respondent's legitimate interest provided a second, independent ground for denying Complainant the requested relief.

Importantly, the Panel reached this result notwithstanding its determination that the site had been used for commercial purposes for the four month period it was "pointed" to the Green domain.  Said the Panel:

While the Panel is very concerned about Respondent's commercial use of the domain, the evidence shows that Respondent used the domain name in a non-commercial fashion in 1999, 2000, 2001, 2002, 2003 and 2004.  The domain name was used for commercial purposes for a couple of months in 2005 (and Respondent thought he was doing it at Complainant's request).  Respondent's rights should not be forfeit over such a small lapse; de minimus non curat lex.

Finally, the Panel held the domain was neither registered nor used in bad faith, given its long standing use as a protest site.  The Panel accordingly resolved this domain name dispute by denying Complainant's request for a transfer of the Home Depot domain name.

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