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.…
