Issue 05/61 | November 8, 2005
De Minimus Commercial Use Did Not Forfeit Gripe Site Registration

In Homer TLC, Inc. v. GreenPeople (National Arbitration Forum Claim No. FA0508000550345) the arbitrator conluded that Home Depot failed to allege facts sufficient to create a prima facie case for lack of rights or legitimate interests to the domain name registration for www.homedepotsucks.com:

Complaining has long been a favorite pastime of humanity and the Internet has not changed that. Respondent is actually using Complainant's trademark correctly because Respondent is referring to Complainant and its business.

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 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. . . .

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 and pointed the domain to greenpeople.org. Respondent removed the protest site at a request that was initiated by Home Depot. 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.

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 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. . . .

While the Panel is very concerned about Respondent's commercial use of the domain, the evidence shows 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. . . .

To discuss this topic further, please feel free to contact the author, William F. Heinze (bill.heinze@tkhr.com), at Thomas, Kayden, Horstemeyer & Risley LLP in Atlanta, Georgia USA.

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