By Steve Levy
Before my career took a sharp turn into the world of domain name disputes, I was in-house intellectual property counsel for The Home Depot. My responsibilities included protecting the marquis trademark all over the world and, due to the fame of the mark and its orange square logo, we found ourselves taking enforcement actions against infringements and other knock-offs in countries such as Turkey, Surinam, Germany, and many others. While we had no shops or other operations in these jurisdictions, the reputation of the mark reached these locals, at least to the degree that some folks found it worthwhile to copy our name and logo.
However, one issue we frequently faced in these efforts was the lack of familiarity with our marks by judges, arbitrators, and many lawyers in these countries. Perhaps they had never visited the U.S.A. or the few other places where there were Home Depot stores or perhaps they didn’t read financial news stories that covered the company’s stock price, annual sales, or senior executive hirings. Whatever the reason, as a business focused on North America, we felt it wise to go to great lengths to educate these legal professionals regarding our famous brand and so we submitted extensive reputational evidence such as examples of advertising, social media pages (including consumer comments), news articles, sponsorships, trade show participation, awards and recognition, consumer surveys, and the like. However, despite our best efforts, every once in a while we would run up against someone who viewed our trademark as being descriptive for the sale of home improvement products and services and who didn’t understand how famous the mark had become and how far its reputation reached around the world.
These evidentiary and reputational issues seem to have been a factor in a recent decision denying transfer of the domain name hobbylibby.com despite a claim by the owner of the HOBBY LOBBY trademark. The Complainant is one of the largest retailers in the United States, selling craft and hobby supplies, and has been the subject of an extraordinary volume of news coverage due to positions it’s taken on the coverage of birth control by health insurance, practices during the COVID pandemic, and other hot-button issues. It’s not a stretch to say that even consumers who do not live near or have never shopped at a Hobby Lobby store are familiar with the brand.
In addressing the confusing similarity element of UDRP par. 4(a)(i), the sole Panelist in this case, who is based in Australia where there are no Hobby Lobby shops, found that the “<hobbylibby.com> domain name [is] confusingly similar to Complainant’s HOBBY LOBBY mark, only differing by the substitution of the letter ‘i’ for the letter ‘o’…”
However, in addressing par. 4(a)(ii) of the Policy (rights or legitimate interests), the Panel noted that “[t]he <hobbylibby.com> domain name was registered on January 3, 2009, several years after the registration of two of Complainant’s three marks” but found that this element of the claim was not successful noting that “Complainant relies entirely on the prior registration of those marks as establishing Respondent’s lack of rights or legitimate interests in the domain name.” (emphasis supplied). This foreshadows the finding under the next UDRP element relating to bad faith registration and use.
With respect to par. 4(a)(iii), the Panel notes that the domain name dose not resolve to any website and, most importantly, recites Complainant’s assertion that “’Libby’ is not a word.” The Panel bristled at this saying that “Libby” is, in fact, a word including “a commonly used name, short for Elizabeth.” It went on to say that “[t]he word “hobby” is a dictionary word. It is not distinctive” and it concluded that “[t]he combination of ‘hobby’ and ‘libby’ in Respondent’s domain name, albeit confusingly similar to Complainant’s mark, are insufficient to constitute evidence [of bad faith].” It concluded by finding that “[t]here is no evidence that Respondent had Complainant’s mark in mind when registering the domain name almost 16 years ago…” Surprisingly, the Panel went on to find that the Complainant had brought the case in bad faith and engaged in reverse domain name highjacking based on its claims that “’Libby” is not a word and that the only reason Respondent registered <hobbylibby.com> was to sell the domain name registration to Complainant.”
As a United States resident who has read a number of news stories about Hobby Lobby and even visited one of its stores, I found this decision rather surprising. The brand is rather famous and, at least based on my own knowledge and experience, it seems likely that it was targeted by the <hobbylibby.com> domain name. However, the Panelist in this case is based in a location where the brand may not be as well known, viewed the situation otherwise. The outcome also seems to have been affected first, by overreaching factual claims regarding the word “Libby” but, more importantly, the lack of evidence showing the reputation of Complainant’s brand reputation. Submitting copies of trademark registrations is great for proof of trademark rights but they do not show the reputation of the mark. Had Hobby Lobby put in sufficient evidence to both educate the non-U.S. Panel and persuaded it of the likelihood that the <hobbylibby.com> domain name is more likely than not targeting the trademark, this case could have turned out differently.
The lesson here is to never take any part of the UDRP process for granted. A complainant must carry its burden of proof to show bad faith targeting through substantial evidence of a mark’s reputation and it cannot assume that the chosen panel will already be familiar with the mark, even if it’s rather famous in the company’s home country.