Homer TLC, Inc. v. GreenPeople
Claim Number: FA0508000550345
PARTIES
Complainant
is Homer TLC, Inc. (“Complainant”)
represented by Carrie L. Johnson
2100 IDS Center, 80 South Eighth Street, Minneapolis, MN, 55402. Respondent is GreenPeople (“Respondent”), 524 S 3rd Ave #1, Highland
Park, New Jersey 08904.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <homedepotsucks.com>,
registered with Wild West Domains, Inc.
PANEL
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Houston
Putnam Lowry, Chartered Arbitrator, as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on August
30, 2005; the National Arbitration Forum received a hard copy of the Complaint
on August 31, 2005.
On
August 30, 2005, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration
Forum that the <homedepotsucks.com>
domain name is registered with Wild West Domains, Inc. and that the Respondent
is the current registrant of the name. Wild
West Domains, Inc. has verified that Respondent is bound by the Wild West
Domains, Inc. registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN’s
Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On
September 6, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of September 26, 2005 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent’s registration as technical,
administrative and billing contacts, and to postmaster@homedepotsucks.com by
e-mail.
A
timely Response was received and determined to be complete on September 26,
2005.
An
additional submission from Complainant was received in a timely manner on
October 4, 2005.
An
additional submission from Respondent was received in a timely manner on
October 10, 2005.
On October 3, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
(a)
Homer TLC,
Inc. is the owner of the famous HOME DEPOT and THE HOME DEPOT trademarks. Homer TLC, Inc. through its predecessor in
interest and licensee (collectively “Complainant”), commenced use of the marks
THE HOME DEPOT and HOME DEPOT (hereinafter the "Marks") in connection
with its products and services at least as early as 1979. Since that time, Complainant has continually
used the Marks in commerce in the United States and abroad.
(b)
Complainant
has worldwide sales under the Marks in the tens of billions of US Dollars each
year. Complainant operates over 1900
retail stores in the United States, Canada and Mexico and employs over 325,000
people.
(c)
Over the
years, Complainant has prominently used and promoted the Marks in advertising,
sales, and various other ways.
Complainant’s sales and advertising expenses under the Marks have been
extensive. As a result, the Marks serve
to identify and indicate the source of Complainant’s services and products to
the consuming public, and to distinguish its services and products from those
of others. As a result of Complainant’s
long usage and promotion of the Marks, they have become well known to, and
widely recognized by consumers.
(d)
Complainant
owns at least 31 United States federal registrations for trademarks incorporating
“HOME DEPOT,” and owns hundreds of registrations for HOME DEPOT trademarks
worldwide.
(e)
Complainant
markets its products and services under the Marks through its web site at
<homedepot.com> (for example, among other things, Complainant markets
building supplies, paint, power tools, batteries, cleaners, tile adhesives,
vinyl sheeting, appliances, pet supplies, fertilizers and roofing supplies on
its website). Complainant’s web site
has been in operation since 1992.
(f)
The domain
name <homedepotsucks.com> is
confusingly similar to the Marks. See
Policy ¶4(a)(i). ICANN panels have
found that, when a domain name incorporates a distinctive mark in its entirety
that creates sufficient similarity between the mark and the domain name to
render it confusingly similar. See
Lowen Corp. v. Henry Chan, D2004-0430 (WIPO August 5, 2004) (finding
that the domain name lowensigns.com is confusingly similar to LOWEN). The addition of the word “sucks” to a
distinctive mark does not mitigate confusing similarity and ICANN Panels have
“routinely found confusing similarity” when a domain name combines a well-known
mark with a generic or slang term. See
Wachovia Corp. v. Alton Flanders, D2003-0596 (WIPO September 19, 2003)
(citing ADT Services AG v ADT Sucks.com, D2001-0213 (WIPO April 23,
2001); see also Societé Air France v. Virtual Dates, Inc., D2005-0168
(WIPO May 24, 2005) (finding the domain name “airfrancesucks.com” confusingly
similar to the mark AIR FRANCE).
(g)
Respondent
has no rights or legitimate interest in the domain name <homedepotsucks.com>. See Policy ¶4(a)(ii).
(1)
Respondent
is not commonly known by the name Home Depot, nor does Respondent operate a
business or other organization under the HOME DEPOT mark or name. See Policy ¶4(c)(ii). Respondent’s tradename is GreenPeople. In the past <homedepotsucks.com> was registered to Organic Consumers
Education Fund. Organic Consumers
Education Fund appears to be a related entity to GreenPeople. The administrative contact for both Organic
Consumers Education Fund and Respondent is Steve Urow and the content of the
website under both Respondent and Organic Consumers Education Fund was
essentially the same for a period of time.
These apparently related entities have owned <homedepotsucks.com> for many years.
(2)
Respondent
was put on constructive notice of Complainant’s rights in the Marks through
Complainant’s federal registrations, which long precede Respondent’s
registration and use of the Domain Name.
Respondent is not using the HOME DEPOT mark under license from Complainant
and Complainant has not otherwise granted Respondent permission to use the
Marks for any purpose. Respondent and
its predecessor previously ran an apparent “complaint site” against Complainant
at <homedepotsucks.com>. This “complaint site” also addressed
specific environmental issues such as the sale of “old-growth” wood. As further discussed below, that old
“complaint site” has been removed and homedepotsucks.com is now used for
commercial purposes. Respondent’s prior
use of <homedepotsucks.com>
as a vehicle for protest of Complainant is further evidence that Respondent is
well aware of Complainant and Complainant’s rights in the Marks.
(3)
Respondent
is not making a legitimate non-commercial or fair use of the domain name
without intent for commercial gain.
Rather, Respondent is using the <homedepotsucks.com>
domain name for commercial gain by diverting traffic to its
commercial website located at the domain name <greenpeople.org>. The <greenpeople.org> website consists
of multiple links to various websites of competitors of Complainant who offer
the same type of products to those sold by Complainant (including among others,
cleaners, paint, siding, lumber, building supplies, energy supplies,
fertilizer, pet supplies, and appliances). Internet users who reach
Respondent’s site are able to search any geographic area in the United States
(and worldwide) and retrieve lists of businesses selling these competitive
products.
(4)
Complainant
anticipates that Respondent will try to justify its infringing commercial use
of Complainant’s federally registered and famous Marks by arguing that
Respondent’s use of the domain name <homedepotsucks.com>
constitutes fair use as an expression of free speech under the First Amendment
of the United States Constitution. That
is simply not the case. At the time of
the filing of this complaint, the domain name <homedepotsucks.com> directs searchers to a commercial
website offering links to services of providers of the same type of products as
those sold by Complainant. Respondent’s
website is supported by advertisers, and the search services provided on the
site lead users to lists of hyper-links that direct users to additional
commercial entities, including competitors of Complainant. Respondent’s website markets these entities’
products as “environmental” and “healthy.”
On information and belief, the entities linked through Respondent’s
website are members of Respondent’s organization and pay Respondent to publish
a link to their business. Respondent’s
<greenpeople.org> website contains little to no expressive speech or
protest and none whatsoever against Complainant.
Respondent’s use of the domain name <homedepotsucks.com> merely to
redirect Internet users to it its commercial website at <greenpeople.org>
is not protected speech under the First Amendment. Rather, it is Respondent’s attempt to use Complainant’s Marks to
redirect traffic to for-profit competitive products and services in exchange
for compensation. Use of the domain
name for this purpose is illegitimate. See
Clear Channel Comms. v. RadioAid.com LLC, FA0405000273224 (NAF July 13,
2004) (ordering transfer of <clearchannelsucks.net>). In Clear Channel, the Panel found
that the respondent’s use of the domain name <clearchannelsucks.net> to
redirect users to his primarily commercial website did not constitute a
legitimate fair use. The respondent
argued that his website constituted a “protest” against the complainant, Clear
Channel Communications; however, the Panel found that, although there were a
few references on linked websites to protest of Clear Channel, the site was
primarily commercial in nature and did not constitute a legitimate fair use of
the complainant’s trademark. Clear
Channel, FA273224 at 5.
Similarly,
in Wachovia Corp. v. Alton Flanders, the Panel ordered transfer of the
domain names <wachovia-sucks.com>, <wachoviabanksucks.com>, and
<wachoviasucks.com> after finding that the domain names did not point to
protest websites and instead directed users to competitive products and
services. Wachovia, D2003-0596
at 3. The Panel wrote
The
domain names at issue here do not point to a protest site . . . [rather they]
point to competitive financial products and services. Simply having a domain name with “-sucks” in the name cannot, by
itself, establish fair use, one must look to the content of the website to
determine if there is an exercise of free speech which allows the Respondent to
rely on the fair use exception. To do
otherwise would legitimize cybersquatters, who intentionally redirect traffic
from a famous mark, simply through the use of a derogatory term.
Id. at 3.
Like the subject domain names in Wachovia and Clear Channel,
The domain name <homedepotsucks.com>
does not point to a protest website. It
points to a commercial website. Such
use is not legitimate fair use under the UDRP.
See id. See also Societé
Air France, D2005-0168.
(h)
Respondent
registered and is using the domain name <homedepotsucks.com>
in bad faith. See Policy
¶4(b)(iii). The ICANN policy clearly
explains that bad faith can be found where a respondent, by using a domain
name, intentionally attempts to attract, for commercial gain, Internet
searchers to its website or other on-line location, by creating a likelihood of
confusion with the complainant’s mark as to source, sponsorship, affiliation,
or endorsement of the website or location or of a product or service on the
website or location. See Policy
¶4(b)(iv).
(1)
Respondent
is intentionally using the HOME DEPOT mark in its domain name to attract
Internet searchers for commercial gain.
See Dell Inc. v. Innervision Web Solutions,
FA0503000445601 (NAF May 23, 2005). In Dell,
the respondent used the complainant’s DELL mark with the generic terms
“computers” and “sucks” (“dellcomputerssuck.com”) to redirect Internet users to
its own commercial website.[1] This website offered products similar to
those manufactured and sold by the complainant (namely, computer
products). The NAF panel found that
this use was evidence that the respondent was attempting to attract Internet
users for commercial gain through use of the complainant's mark. Finding that such a use was a use in bad
faith under ¶4(b)(iv) of the Policy, the panel ordered the domain name
transferred to the complainant.
Like the respondent in Dell,
Respondent is realizing commercial gain by redirecting Internet users to its
commercial website. Moreover, upon
information and belief, Respondent is receiving compensation from the various
website owners who are linked through its directory website and from the advertisers
who sponsor its website. This activity
alone constitutes commercial gain because Respondent is receiving
compensation.
(2)
Furthermore,
Respondent is using the domain name <homedepotsucks.com>
to disrupt Complainant’s business.
Respondent redirects the domain name <homedepotsucks.com> to its website at greenpeople.org
where it offers links to competitive goods and services. By using the domain name in this manner,
Respondent is using the Marks to draw customers away from Complainant and
consequently damage its business. This
use is a bad faith use of the domain name under the Policy. See Societé Air France, D2005-0168 at
5-6 (ordering transfer of the domain name <airfrancesucks.com> and
finding bad faith based in part on respondent’s registration and use of the
domain name to disrupt the complainant’s business).
B.
Respondent
a. Respondent’s
Domain Name Is Not Identical to, Nor Confusingly Similar to, Complainant’s
Mark. ICANN Rule ¶ 3(b)(ix)(1); ICANN Policy ¶ 4(a)(i).
Respondent’s
domain name, <homedepotsucks.com>
is neither identical nor confusingly similar to Complainant’s trademark or
service mark. According to the ICANN
Policy, Complainant must demonstrate the following element to be successful in
its Complaint:
“Respondent’s
domain name is identical or confusingly similar to a trademark or service mark
in which Complainant has rights.” ICANN Policy ¶ 3(b)(ix)(1).
Complainant alleges it owns the
marks HOME DEPOT and THE HOME DEPOT. See Complaint ¶11. The domain at issue is <homedepotsucks.com>, and by the
addition of the distinctive word “sucks”, the domain is not identical to HOME
DEPOT or THE HOME DEPOT.
Complainant argues that <homedepotsucks.com> is
confusingly similar to its marks. Both
Complainant and Registrant are residents of the United States and, as such, we
look to the test under U.S. law to determine whether the domain is confusingly
similar to the Complainants marks. The
test is whether consumers are likely
to be confused and has been applied
in numerous trademark cases, including Bally Total Fitness v. Faber, 29
F. Supp.2d 1161 (C.D.Cal. 1998). The defendant in Bally Total Fitness
registered the domain BallySucks.com and, as in the present case, used the
domain to express complaints about Bally’s health club business. Plaintiff owned a service mark, BALLY. The court dismissed the case, stating that,
as a matter of law, Bally could not prove a likelihood of confusion between
<ballysucks.com> and the Bally’s marks and because “No reasonable
consumer comparing Bally's official web site with Faber’s site would assume
Faber’s site ‘to come from the same source, or thought to be affiliated with,
connected with, or sponsored by, the trademark owner’.”
This
line of cases has also been followed by numerous UDRP decisions. In Lockheed Martin Corp. v. Parisi, (World
Intellectual Property Organization (“WIPO”), D2000-1015, Jan. 26, 2001) the
administrative panel found that “[b]oth common sense and a reading of the plain
language of the Policy support the view that a domain name combining a
trademark with the word “sucks” . . .
cannot be considered confusingly similar to the [complainants] trademark.” Similar conclusions are seen in analogous
cases. See Wal-Mart Stores, Inc. v.
wallmartcanadasucks.com, D2000-1104 (WIPO Nov. 23, 2000); see also E&J.
Gallo Winery v. Hanna Law Firm, D2000-0615 (WIPO Aug. 3, 2000)(suggesting
in dicta that the addition of sucks or other identifier to a famous mark would
be sufficient to defeat a claim that the domain names confusingly similar);
see also KB Home v. RegisterFly.com, FA 506771 (Nat. Arb. Forum Aug. 30,
2005) (where the Panel also finds that the <kbhomesucks.com> domain name
is not confusingly similar to Complainant’s KB HOME mark because “no reasonable
person would conclude that a real estate developer would have any relationship
with a domain name that adds the word “sucks” to its mark.”)
Here,
as in Bally and Lockheed Martin Corp., the Respondent created a
protest site by adding the classic protest word, “sucks,” to the end of the
protested company’s name to communicate the message about Complainant’s
eco-unfriendly business practices and sales of old growth lumber. As noted in Bally, the word “Sucks has entered the vernacular as a
word loaded with criticism” and the “reasonably prudent user would not mistake
[Respondent’s] site for [Complainant’s] official site. Respondent’s use of “THE HOME DEPOT SUCKS!”
and “HOME DEPOT SUCKS FOR SOURCING AND SELLING OLD GROWTH LUMBER” on its site
makes it crystal clear to visitors that they have not reached the official HOME
DEPOT site:
For
the foregoing reasons, Respondent’s domain name, <homedepotsucks.com> is not identical to Complainant’s
marks and is not likely to be confused with Complainant’s marks. Common sense
and a plain language reading of the domain name, and Respondent’s use of HOME
DEPOT SUCKS! on the website, effectively distinguish the Complainant’s mark
from the Respondent’s <homedepotsucks.com>
domain and not even an inexperienced internet user would consider the two to be
confusingly similar. Thus, Complainant
has failed to meet the first element required under the ICANN Policy and the
Complaint should be dismissed.
b. Respondent
Has Rights and Legitimate Interests in the Domain.
ICANN Rule 3(b)(ix)(2); ICANN Policy ¶4(a)(ii).
Even
if the Complainant could demonstrate that <homedepotsucks.com> is confusingly similar to its
marks, Complainant must also demonstrate the Respondent has no rights or
legitimate interests in the domain. The
following facts will show that Respondent can, in fact, demonstrate a
legitimate interest in the <homedepotsucks.com>
domain name. ICANN Policy 4(c)(iii) which provides the following as a complete
defense for Registrant’s continued use of the domain as a protest site: “(iii)
[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
registered the <homedepotsucks.com>
domain on August 28, 1998, and has maintained a legitimate protest site
directed towards the Complainant for seven years.
Respondent
is an environmental activist who is dedicated to providing information to the
public with the hope that the more the public is informed the more they can
responsibly purchase eco-friendly products.
Respondent maintains several eco-orientated websites;
<greenpeople.org>, <veggiedate.org>, <ecoroomates.com>, and
<organicconsumers.org>. These websites are dedicated to providing
information and services geared toward eco-friendly consumers.
Respondent
operates <homedepotsucks.com>
with a legitimate “First Amendment” purpose of expressing his views about
Complainant. Respondent’s <homedepotsucks.com> provides
information which consumers find valuable in making eco-friendly choices. The right to inform the public is at the
very heart of the First Amendment of the U.S. Constitution, which is the law in
the country where both parties reside.
A consumer wishing to make an informed choice about the products they
are purchasing from Home Depot would find <homedepotsucks.com> very helpful.
Home Depot
cannot use the UDRP as a vehicle to insulate itself from critical views and
negative commentary no matter how distasteful the Complainant finds these
views. See Legal & Gen. Group
Plc v. Image Plus, D2002-1019 (WIPO Dec. 30, 2002) (finding legitimate
interests in the Respondent's favor because “[T]he goals of the Policy are
limited and do not extend to insulating trademark holders from contrary and
critical views when such views are legitimately expressed without an intention
for commercial gain.”); see also Britannia
Bldg. Soc'y v. Britannia Fraud Prevention, D2001-0505 (WIPO July 6, 2001)
(“Use of the Policy to provide such insulation would radically undermine
freedom of discourse on the internet and would undercut the free and orderly
exchange of ideas that the Policy seeks to promote.”).
It
must be noted that <homedepotsucks.com>
is an information site and Respondent does not gain any commercial advantage from
its use. Complainant has attempted to
mischaracterize Respondent’s use of the domain as “for commercial gain”
because, for several months this year, Respondent removed the protest site
located at <homedepotsucks.com>
and pointed the domain to <greenpeople.org>. Respondent removed the protest site at a request that was initiated by Home Depot. See Complaint ¶11(g)(4). This redirect
was performed in response to a request from The Rainforest Action Network
(RAN). RAN contacted the Respondent and
informed him that they were in negotiations with Home Depot and that the
removal of the protest site would aid their negotiations. Respondent, acting in his belief that Home
Depot was acting in good faith and was, at last, making legitimate concessions
towards an eco-friendly policy. So
believing, Respondent removed the protest site. Respondent substituted the
<greenpeople.org> DNS and IP address information in the Whois record,
which had the effect of forwarding visitors to the <homedepotsucks.com> domain to Respondent’s
<greenpeople.org> website.
Respondent believed that consumers wishing to obtain information on Home
Depot’s ecological buying practices would benefit from information on
eco-friendly products as well.
Contrary
to Complainant’s unfounded allegations, GreenPeople.org is not a commercial website but instead provides information to
consumers regarding eco-friendly home products. The <greenpeople.org> domain name is a directory, which
provides listings for free. The only
commercial benefits that Respondent receives from the <greenpeople.org>
website are nominal fees for specialized listings that he uses to cover
operational costs. In fact, from 1998 to 2000 <greenpeople.org> had
nonprofit status from fiscal sponsor Social and Environmental Entrepreneurs
(“SEE”) <saveourplanet.org>.
Respondent did not renew beyond the year 2000 because GreenPeople is not
a “membership” organization and does not receive donations. Respondent also
felt it was unnecessary to pay yearly fees to SEE for retaining nonprofit
status.
Complainant
relies upon Dell Inc. v Innervision Web Solutions FA0503000445601 (NAF May
23, 2005) to support its claim that the relatively brief redirect to
GreenPeople.org is a “commercial use” of the domain. The Respondent in Dell Inc. v Innervision Web Solutions
sold computer systems directly from a website that competed directly against
Dell. “Whether Respondent is a
competitor of Dell’s is to be determined . . . by the types of goods and
services he offers for sale. Respondent
does not deny that he offers computer systems for sale or that his computer
systems compete with Dell’s.” Id.
Respondent in this case does not sell hardware products, nor do the
products advertised through free listings on <greenpeople.org> compete
directly with Home Depot. A consumer
interested in eco-friendly products is not going to find those products at Home
Depot. This is in sharp contrast to Dell,
where a consumer interested in a Dell computer system was offered an equal and
competitive product. In addition, the
Respondent in Dell sold products directly through its website and the
Respondent benefited from those sales.
In the present case, Respondent does not sell any products at <homedepotsucks.com>, does not
derive revenues from advertising at, or traffic to, the domain, and except for
the nominal fees received during the time of the redirect, receives no
commercial benefit from the <homedepotsucks.com>
site. Surely a website owner who operates his site in a non-profit manner
cannot be said to be gaining commercial advantage. See Lockheed Martin Corp. v.
Etheridge, D2000-0906 (WIPO Sept. 24, 2000) (finding that the Respondent
has rights in the <missionsuccess.net> domain name where she was using
the domain name in connection with a noncommercial purpose; see also Baja Marine Corp. v. Wheeler Tech., FA
96954 (Nat. Arb. Forum May 17, 2001) (finding that Respondent has rights and
legitimate interests in the domain name where Respondent made a non-commercial
use of BAJABOATS.COM and received no funds from users of the site connected to
the domain name).
It
is worth noting that these products are truly eco-friendly and further the
Respondent’s mission of providing consumers with information and products that
support the goal of an eco-friendly planet.
The Complainant’s reliance on the wholly unsubstantiated and unsupported
allegations of the “commercial” nature of <greenpeople.org> is untenable
and smacks of an attempt at reverse domain name hijacking. GreenPeople.org provides consumers with
information about products that are not offered by Home Depot. GreenPeople.org does receive some revenue
from these listings, but <greenpeople.org> cannot be characterized as a
commercial site. In addition,
Respondent operated the original protest site from 1998 through April of
2005. Only upon being informed that
Home Depot was agreeing to institute eco-friendly policies did the Respondent
redirect the URL to his <greenpeople.org> and the length of that redirect
was four months – during which time Complainant apparently felt it now had the
“evidence” of “commercial use” necessary to paint Respondent as a
cybersquatter.
Upon
learning of the present action filed against him, Respondent reinstituted the
protest site. Respondent believes that
Home Depot is not operating in good faith with respect to its negotiations with
RAN, and thus the public deserves to be informed of Complainant’s
policies. Respondent has operated <homedepotsucks.com> with a
legitimate first amendment purpose since 1998.
Respondent only removed the protest site when he believed that his
eco-friendly mission required it. Respondent has had, and continues to have, a
legitimate right and interest in the domain under the First Amendment. Moreover, this is the most logical domain at
which he can express his views and inform the public about the damage that he
believes Complainant is waging upon the environment. The public has come to expect critical sites at “sucks” domains
and considering his primary use of the domain over the years, Respondent has a
legitimate interest in retaining it, so long as he continues to use it to
protest and comment on the Complainant.
c. Respondent Did Not Register or Used the
Domain in Bad Faith. ICANN Rule
3(b)(ix)(3); ICANN Policy ¶4(a)(iii).
Under
ICANN Policy ¶4(a)(iii) Respondent must have registered and used <homedepotsucks.com> in “bad
faith.” Complainant must show both bad faith in registration and bad
faith in use of the domain at issue.
Complainant has failed to show either element, let alone both
elements. Complainant must prove both
prongs, but has only alleged that Respondent acted in bad faith in the use of
the <homedepotsucks.com>
domain name. Complainant has not
proffered any evidence at all that Respondent registered <homedepotsucks.com> in bad
faith. See Graman USA Inc. v.
Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003)
(finding that general allegations of bad faith without supporting facts or
specific examples do not supply a sufficient basis upon which the panel may
conclude that the Respondent acted in bad faith); see also White Pine
Software, Inc. v. Desktop Consulting, Inc., D2000-0539 (WIPO Aug. 31, 2000)
(declining to transfer the domain name where a full factual record has not been
presented to the panel such that a conclusive determination can be made
regarding the parties’ respective claims to the contested domain name).
Respondent
registered <homedepotsucks.com>,
in good faith, with the intent of launching a protest site, on August 28,
1998. Respondent created and posted the
legitimate protest site at least as early as January 1999. Complainant has not made a single allegation
that Respondent registered the domain and operated the protest site located at <homedepotsucks.com> in bad
faith. Complainant has only alleged that
the redirection of the URL to <greenpeople.org> was evidence of bad
faith. See Complaint ¶11(h). This redirection was made in April of 2005,
a full 7 years after the registration and launch of the legitimate protest
site. Respondent did not register <homedepotsucks.com> in 1998
with the intention of running a commercially damaging site directed at Home
Depot a full 7 years later. And when
the Respondent redirected the URL, he redirected it to <greenpeople.org>,
a site which provides little revenue to the Respondent.
The
Respondent’s good faith intentions are further evidenced by this
redirection. The Respondent registered <homedepotsucks.com> with the
intention of providing information on eco-friendly products and information
about the very eco-unfriendly products that Home Depot sells. Respondent operated the protest site until
2005 when at that time he was contacted by RAN. RAN informed the Respondent that they were in final negotiations
with Home Depot with regards to Home Depot’s decision to phase out the sale of
wood culled from old growth endangered forests. RAN convinced the Respondent that the removal of the protest site
was key to the negotiations.
Respondent
only removed the protest site because he believed that Home Depot was serious
about their intentions. Respondent
registered <homedepotsucks.com>
with the intention of convincing Home Depot to institute eco-friendly
policies. The end of old growth forest
destruction was central to this purpose.
Respondent, again acting in good faith, redirected the URL to his own
<greenpeople.org> with the intention of informing the public of
eco-friendly products. Respondent did
not intend to compete with Home Depot or to harm Complainant’s business. If Respondent, in bad faith, intended to
harm Home Depot he would not have removed the protest site. The protest site is certainly damaging to
Home Depot as it informs the public of the destructive and harmful policies
that Home Depot engages in. The
Respondent has always hoped that public pressure would force Home Depot to
abandon their eco-unfriendly policies and that does not amount to bad faith as
intended under the UDRP.
Respondent
has never wished to compete with or to economically harm Home Depot, as he has
only intended to inform the public. Because of this Respondent has reinstituted
the protest site located at <homedepotsucks.com>. Respondent believes that Home Depot has not
fulfilled its promises made to RAN when he took the protest site down. Respondent believes the original purpose of
the protest site is unfilled and wishes to maintain the pressure on Home Depot
to abandon its policies.
Respondent
believes this Response demonstrates that he has acted in good faith at all
times. Respondent registered the domain
name in good faith. Respondent operated
a legitimate protest site for 7 years.
Respondent only removed the protest site for four months when he
believed it would help accomplish his original objectives. Respondent has reactivated the protest in
good faith with the intention of furthering his environmental goals.
Respondent
would also like to point out that <homedepotsucks.com> was never registered with the intent to
selling, renting or transferring the domain name to the Complainant.
Complainant has not made any allegations that Respondent intended to sell, rent
or transfer the domain name at any time.
The allegations of bad faith use simply do not do not bear up under
scrutiny.
In
sum, Complainant has failed to prove either prong of ICANN Policy ¶4(a)(iii)
requiring a showing of bad faith use and registration. Further, Complainant has not shown that
there is a likelihood of confusion between THE HOME DEPOT or HOME DEPOT and <homedepotsucks.com> and
Respondent has demonstrated that it has a legitimate right and interest in the
domain. Accordingly, the Complaint
should be denied, and Respondent should be permitted to retain its domain and
protest website at <homedepotsucks.com>.
C.
Additional Submissions
Respondent
argues that the addition of “sucks” to HOME DEPOT creates a domain name that no
reasonable person could confuse with Complainant. The threshold of proof of confusing similarity under the Policy
is low. Yahoo! Inc. v. Fato,
FA286410 (NAF July 26, 2004).
Complainant is required to show “confusing similarity”[2]
between the domain name and Complainant’s THE HOME DEPOT and HOME DEPOT
trademarks (collectively “the HOME DEPOT Marks”); however, under the Policy,
Complainant is not required to show “likelihood of confusion” as defined by
United States case law. Nikon v.
Technilab, Inc., D2000-1774 (WIPO February 26, 2001); see also Nicole
Kidman v. Zuccarini, D2000-1415 (WIPO January 23, 2001) (holding that
confusingly similarity under the Policy is based upon the inclusion of a
trademark in the domain name, and not upon the likelihood of confusion
test). “Numerous” ICANN panels have specifically held that “when a
domain name wholly incorporates a complainant’s registered mark, that is
sufficient to establish identity or confusing similarity for purposes of the
Policy.” Magnum Piering v. The
Mudjackers, D2000-1525 (WIPO January 29, 2001); see also Diners Club
Int’l Ltd. v. SPS, FA149414 (NAF April 21, 2003); Nikon,
D2000-1774. The domain name <homedepotsucks.com> wholly
incorporates Complainant’s registered famous trademark HOME DEPOT. Accordingly, the domain name is confusingly
similar to the HOME DEPOT Marks.
Respondent erroneously alleges in its Response that the
addition of the term “sucks” to the HOME DEPOT mark prevents any likelihood of
confusion between the domain name <homedepotsucks.com>
and the HOME DEPOT marks and that, therefore, the two are not confusingly
similar under the Policy. See Response
at 2-3. As Complainant demonstrated
in its Complaint, ICANN panels have long held that the addition of “sucks” to a
well-known trademark does not prevent a finding of confusing similarity. See Complaint at 4; see also The
Royal Bank of Scotland Group v. Lopez, D2003-0166 (WIPO May 9, 2003)
(finding that “a majority of cases” presented with a similar question found
that the addition of “sucks” does not alleviate confusing similarity).[3]
Contrary
to Respondent’s assertions, numerous ICANN panels have held that the addition
of “sucks” to a well-known trademark does not create a distinction sufficient
to overcome “confusing similarity” under the Policy. See e.g., The Stop & Shop Supermarket Co. v.
Anderson, FA133637 (NAF January 8, 2003).
In Stop & Shop, the panel reasoned “the Internet is a forum
that reaches a worldwide audience, many of which do not speak the English
language; for those Internet users, the word ‘sucks’ would not sufficiently
eliminate any confusion between Complainant’s mark and the disputed domain
name.” Stop & Shop,
FA133637.[4]
Complainant
is an international company with a strong worldwide reputation. It is highly possible, even probable, that
Internet users in non-English speaking areas of the world will use the Internet
to find Complainant, will not understand the pejorative nature of the word
“sucks,” and will be confused.
Regardless of language, when Internet users perform searches for
Complainant on Internet search engines, the addition of “sucks” to HOME DEPOT
will not prevent <homedepotsucks.com>
from appearing in the search results.
This possibility adds to the risk of confusion. See Royal Bank of Scotland,
D2003-0166 (finding “search engines would probably retrieve a domain name
consisting of the search term with the addition of any suffix, including
‘sucks’ and therefore be likely to confuse the average Internet user who might
not necessarily be able to immediately exclude any relationship with Complainants.”). Internet users may not read the domain name
before clicking on the link and being directed to Respondent’s website. However, once the user makes that click, the
damage is done and actual confusion has occurred.
Respondent spends a significant portion of its Response
arguing that because the domain name <homedepotsucks.com>
leads to a “protest” website against Complainant and utilizes the text HOME
DEPOT SUCKS on the website, this prevents any likelihood of confusion between
the domain name and Complainant. Response
at 3. As noted above, likelihood of
confusion is not the threshold of proof for finding confusingly similarity
under the Policy. Rather, under the
Policy, ICANN panels look to compare the text of the actual domain name and the
Complainant’s marks. As the panel noted
in Magnum Piering, “Under the Policy, the question of identity and
confusing similarity is evaluated based solely on a comparison between a
complainant’s word mark and the alphanumeric string constituting the domain
name at issue.” Magnum Piering, D2000-1525. A panel does not consider the content of Respondent’s website in
this analysis and the website content is, therefore, irrelevant. Even if the content of the website were
relevant to this analysis, the fact remains that at the time Complainant filed
its Complaint, the domain name <homedepotsucks.com>
did not lead to the website Respondent refers to in its Response. It pointed instead to the website found at
<greenpeople.org> and did not display the text HOME DEPOT SUCKS.
Respondent
has not demonstrated a legitimate interest or right in the domain name <homedepotsucks.com>. Respondent argues that it is making a “fair
use” of the domain name through its “protest” of Complainant. However, to have a “legitimate” fair use
under the Policy, Respondent cannot have either an intent for commercial gain,
or to tarnish the HOME DEPOT Marks.[5] Respondent cannot meet either of these
requirements for legitimate fair use.
Respondent’s
alleged “fair use” of the domain name <homedepotsucks.com>
as a “protest” site became moot once it redirected the website to the
commercial activity site at greenpeople.org.
Respondent does not deny that it directed the <homedepotsucks.com> domain name to the GreenPeople
website. In fact, it admits that it
directed the domain name there for over four months. Response at 4 and 7.
Respondent alleges that it directed the domain name <homedepotsucks.com> to the
greenpeople.org website in response to communications it had with Rainforest
Action Network (“RAN”) and that it rerouted it to assist RAN in some
negotiations with Complainant. Response
at 5. Complainant did not have an
agreement with RAN or with Respondent regarding the domain name <homedepotsucks.com>. Regardless of Respondent’s motives for
rerouting the domain name, the fact remains that it chose to reroute the domain
name to a site containing definite commercial activity. If its purpose in rerouting the domain name
was to allegedly facilitate negotiations with RAN and Complainant, it could
have chosen a variety of options other than redirecting the domain name to its
related commercial web site. For
example, it could have let the domain name sit idle. Further, Respondent only ceased redirecting the <homedepotsucks.com> domain name
to the <greenpeople.org> site after the Complaint was filed. There is no indication that Respondent would
not have continued to use the <homedepotsucks.com>
domain name in a commercial manner were it not for the fact that Complainant
filed this action.
Respondent’s
argument that the <greenpeople.org> website does not engage in commercial
activity is false. The site is a
listing of commercially available “eco-friendly” products, and by Respondent’s
own admission, Respondent receives compensation from the businesses listed on
the site. Respondent’s claim that it
received only “nominal” compensation through the listings is no defense. Response at 5 and 6. Even “nominal” compensation creates commercial
activity.
Further,
even if Respondent did not itself achieve commercial gain from its websites,
ICANN panels have held that their only needs to be commercial gain sought by some
party for the use to be commercial. See
Focus Do It All Group v. Athanasios Sermbizis, D2000-0923 (WIPO October 6,
2000) (finding that Respondent’s domain name which linked visitors to a
directory of regional competitors was not a legitimate use). Accordingly, even if Respondent received
zero compensation from the <greenpeople.org> website, Respondent’s use of
the domain name to direct users to greenpeople.org constitutes commercial
activity because the various companies linked to the greenpeople.org directory
site benefit from the subsequent interest and purchases of those searchers who
locate the entities’ products through greenpeople.org. See id. (finding that “[I]t is enough
that commercial gain is being sought for someone” for a use to be commercial).
In
Athanasios, the respondent registered the domain name focus-do-it-all.com
which the ICANN Panel found to be identical to the complainant’s mark FOCUS DO
IT ALL. Id. The respondent’s website offered travel
information to tourists through an on-line trade directory and provided a link
to a website to help people find homes in London. Id. The respondent
listed the phrase “contact George for prices” on the bottom of the website to
offer the services of one George Ismiris (who was not the respondent). Id.
The panel found that such listing of services constituted commercial
gain, reasoning that although the respondent may not have personally gained in
a commercial sense, it was enough that commercial gain was sought for someone
else (i.e., George Ismiris). Id.
Similar to the facts in Athanasios,
Respondent’s use of the <homedepotsucks.com>
domain name to direct to the <greenpeople.org> website results in a
commercial gain for others by placing links to competitors of Complainant and
other individuals, groups or entities on its website. Respondent alleges that the products sold through the links at
<greenpeople.org> are not competitive products to those sold by
Complainant because they are “eco friendly” or “green.” Response at 5. Complainant contests Respondent’s allegation
that it does not sell “eco friendly” products.
Nevertheless, the point is irrelevant; the website at
<greenpeople.org> directs consumers to products that are alternatives to
the standard household products sold by Complainant. The fact remains that consumers purchasing items through <greenpeople.org>
(directed there by the confusingly similar domain name <homedepotsucks.com>) could have
purchased an alternative product at one of Complainant’s stores. Providing an alternative product is the
whole point of greenpeople.org. See
Complaint at 6 for examples of GreenPeople’s competitive products.
Regardless
of whether the products linked through greenpeople.org are competitive to those
sold at Complainant’s stores, the standard does not require the Respondent’s
activity to be competitive, but merely commercial. The activity on the <greenpeople.org> site is clearly
commercial. Respondent and the linked
third parties could be selling products completely unrelated to Complainant and
that would not change the fact that the sale of products or services results in
commercial activity. Just as commercial
gain was sought for George Ismiris in Athanasios, commercial gain was
sought by Respondent for the various website owners who were linked to the
greenpeople.org web page.
Therefore, Respondent’s use of the domain name <homedepotsucks.com> to redirect
to <greenpeople.org> constitutes intent for commercial gain and cannot
constitute a legitimate fair use under the Policy.
Respondent
alleges that its current website at <homedepotsucks.com>
is only an informational website and is not for commercial gain when, in
reality, portions of Respondent’s <homedepotsucks.com>
website contain commercial activity.
Attached to this Reply is a print out of a page of the <homedepotsucks.com> website
that provides links to other environmental organizations. Included on that page is a link
GreenPeople’s website (discussed above) and a link to “GreenISP,” a sponsoring
organization run by GreenPeople that reportedly offers an ISP product for $9.95
per month. The page also contains a
link to <ecoroomates.com> an organization run by GreenPeople. The ecoroomates.com website includes
advertisements and links to the companies supplying the advertisements. Furthermore, many of the environmental
organizations linked to this portion of <homedepotsucks.com>
solicit contributions or sell products through their websites. By linking to these websites, Respondent is
assisting those organizations in their commercial gain (even if the
organizations are not-for-profit organizations, the exchange of money
constitutes commercial activity). Under
the reasoning in Athanosios, Respondent’s <homedepotsucks.com> “protest” website therefore has an
element of commercial gain and commercial activity and Respondent’s use of the
domain name cannot constitute a legitimate fair use.
Under
the Policy, to have a legitimate non-commercial fair use, Respondent must also
operate its website without intention to tarnish the HOME DEPOT marks. Complainant finds it hard to believe that
Respondent does not have an intention to tarnish Complainant’s HOME DEPOT marks
or name. On its “protest” website,
Respondent shows a skeleton wearing a trademark Home Depot orange apron
prominently showing Complainant’s registered THE HOME DEPOT design mark. Respondent also prominently displays on the
site the federally registered THE HOME DEPOT design mark with a “NO” slash
design through it containing the word “sucks” stamped on the cross bar. Complainant fails to see how these uses do
not constitute an intentional attempt by Respondent to tarnish Complainant’s
HOME DEPOT marks. Respondent’s website
also encourages viewers to protest Complainant by bolting their necks to the
shelving at a The Home Depot store.
Finally, the title of Respondent’s website uses the domain name in text
by stating “Home Depot sucks for sourcing and selling old growth lumber.” Such a statement certainly disparages and
tarnishes the HOME DEPOT marks.
Respondent’s use of the HOME DEPOT marks to further its alleged “free speech” cause has tarnished the HOME DEPOT marks. See Royal Bank, D2003-0166 (“Respondents have used domain names that are identical and substantially similar to Complainants’ trademarks to exercise their freedom of expression and this has the direct consequence of tarnishing Complainants’ trademarks. Respondents can very well achieve their objective of criticism by adopting a domain name that is not identical or substantially similar to Complainants’ marks.”) (quoting and agreeing with The Royal Bank of Scotland v. Lopez, D2002-0823 (WIPO December 3, 2002)). Respondent did not have to use <homedepotsucks.com> t