Castaways Bar, LLC represented by Carl Spagnuolo of McHale & Slavin, P.A., Florida, USA has just been found guilty of Reverse Domain Name Hijacking (RDNH) by a one member UDRP panel.
Complainant operates a bar and restaurant in Jupiter, Florida under the name SQUARE GROUPER TIKI BAR
Complainant claims to have trademark rights as early as January 26, 2003.
Complainant says its “SQUARE GROUPER” establishment is well known and is “nearly a famous mark” since it was used as the location for the filming of the famous Jimmy Buffet and Alan Jackson music video entitled “5 O’Clock Somewhere” and the Alan Jackson music video “Long, Long Way to Go”.
The SQUARE GROUPER according to the Complainant is a popular Florida tourist destination well known throughout Florida and the Southeast, with 160,000 visitors each year from around the world, including many celebrities; its website at squaregrouper.net averages over 500 hits per day; search engine referrals exceed 100 per day; the SQUARE GROUPER Facebook page has 17,934 “Likes”; and there are 2,300 SQUARE GROUPER newsletter subscribers.
Complainant was “forced to utilize” the domain name <squaregrouper.net> “due to the misappropriation and holding ‘hostage’ by the Respondent of the .com domain name”.
As to legitimacy, Respondent apparently routinely traffics in domain names for the purpose of speculation and resale profiteering; a Reverse Whois Lookup indicates Respondent owns 22 domain names; “WetWorks, LLC” is a closely held corporate entity operated by Danny Simon and is associated with “The Licensing Group Ltd,” none of which business enterprises utilize the words or are generally known as “square grouper”; and the Domain Name resolves to a parked webpage displaying competitive links.
As to bad faith, Respondent’s conduct falls within paragraphs 4(b)(i) and 4(b)(iv) of the Policy by incorporating “Complainant’s registered trademark” [sic] into the Domain Name and using the Domain Name for a “parked” website that promotes competing restaurant businesses in expressly the same geographic area as Complainant (Jupiter, Florida) and offers to sell the Domain Name.
“Respondent has had the Domain Name for almost 15 years before the sudden ambush by Complainant. Complainant claims it has been using the mark for more than 10 years yet filed its registration application on September 9, 2013. This came shortly after a representative of Complainant e-mailed Respondent on August 31, 2013 saying:
I see you are the owner of SquareGrouper.com and I wanted to reach to you about purchasing this domain from you. I represent Square Grouper Tiki Bar in Jupiter, FL. We have had the .net domain for a few years now but would like to get the .com as well”.
Respondent took no action in response to that email. Given the timing of that e-mail and of Complainant’s trademark filing, Complainant clearly intended to engage in Reverse Domain Name Hijacking when it could not purchase the Domain Name from Respondent.
Respondent claims to have registered the Domain Name in 1998, around the time when the “Square Grouper” story line was first registered with WGA by one of Respondent’s principals. The Panel finds this entirely plausible since Respondent has annexed the WGA registration details (Response Annex 4). However, Respondent has produced no evidence of registration of the Domain Name in 1998.
What is clear is that the Domain Name had been registered some time prior to August 17, 2002 because on that date its registration was renewed for one year, although the identity of the registrant at that time has been redacted (Response, Annex 6). There is no evidence before the Panel that there has been any change of registrant since the Domain Name was first
Respondent’s Annex 11 shows that Complainant registered the domain name <squaregrouper.net> on August 16, 2003.
Complainant’s statement that Complainant was “forced to utilize” the domain name <squaregrouper.net> “due to the misappropriation and holding ‘hostage’ by the Respondent of the .com domain name” is evidence that Respondent was the registrant of the Domain Name prior to August 16, 2003 and that Complainant was aware of Respondent’s registration of the Domain Name more than 10 years before it brought this complaint.
On balance the Panel concludes that Respondent was the registrant of the Domain Name some time prior to August 17, 2002 and that it was registered in connection with Respondent’s proposed “Square Grouper” movie and without knowledge on the part of Respondent of Complainant’s SQUARE GROUPER TIKI BAR trademark, which Complainant had not then used.
This is evidence of good faith registration which, in the Panel’s view, outweighs any evidence of possible bad faith use based on the (unproven) assumption that the links on Respondent’s website were placed there intentionally by Respondent.
The Panel concludes that Complainant has failed to establish that the Domain Name was registered and is being used in bad faith.
However, in the circumstances of this case that delay leads to the conclusion that Complainant did not regard Respondent’s registration as having been made in bad faith. This in turn leads the Panel to the conclusion that, knowing that the Domain Name was not registered in bad faith, Complainant nevertheless brought this proceeding in an attempt to deprive the registrant of the Domain Name and has thereby engaged in Reverse Domain Name Hijacking.