GrubHub, Inc. v. GJ Nelson
Claim Number: FA1005001327153
PARTIES
Complainant is GrubHub,
Inc. (“Complainant”), represented by Bartly J. Loethen, Esquire, of Synergy Law Group L.L.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hubgrub.com>,
registered with Godaddy.com, 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.
M. KELLY TILLERY, ESQUIRE as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum electronically on May
27, 2010.
On May 30,
2010, Godaddy.com, Inc. confirmed
by e-mail to the National Arbitration Forum that the <hubgrub.com> domain
name is registered with Godaddy.com, Inc.
and that the Respondent is the current registrant of the name. Godaddy.com,
Inc. has verified that Respondent is bound by the Godaddy.com, 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 June 4,
2010, the Forum served the Complaint and all Annexes, including a
Written Notice of the Complaint, setting a deadline of June 24, 2010 by which
Respondent could file a Response to the Complaint, via e-mail to all entities
and persons listed on Respondent’s registration as technical, administrative,
and billing contacts, and to postmaster@hubgrub.com. Also on June 4, 2010, the Written Notice of
the Complaint, notifying Respondent of the email addresses served and the
deadline for a Response, was transmitted to Respondent
via post and fax, to all entities and persons listed on Respondent’s
registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on June 21, 2010.
On June 29, 2010,
pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed M. KELLY TILLERY, ESQUIRE
as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be cancelled.
PARTIES’ CONTENTIONS
A. Complainant
Complaint contends that:
1. it is a
2. Respondent
is an individual, registrant of the domain name <hubgrub.com>;
3. Respondent’s website is not operational
and purports to be “available soon”;
4. Respondent
has no independent interest in the name “hubgrub” and has never been authorized
by Complainant to use a mark confusingly similar to its Servicemark, GRUBHUB;
5. the word “hubgrub” has no inherent meaning or any generally
recognized meaning apart from being a play on words “grub” and “hub”;
6. “GrubHub” clearly refers to a “hub” or
location related to “grub” or food;
7. GrubHub
has spent substantial resources in developing and promoting its website and
brand;
8. there has been actual customer confusion between <grubhub.com>
and <hubgrub.com>;
9. Respondent’s
website format and design is intentionally set up to mimic <grubhub.com>’s
website;
10. <Hubgrub.com> is not an operational
website directly or clearly related to any bona fide offering of goods
or services;
11. Respondent
maintains no company or corporation related to <hubgrub.com> and upon information and belief conducts no other
business under the name hubgrub;
12. Respondent
is aware of this confusion and refuses to take down its infringing
website.
B. Respondent
Respondent contends that:
1. he is an
individual residing in
2. he registered the domain name <hubgrub.com> on June 26, 2004
without any knowledge of anyone who might have rights to the name “hubgrub or
“grubhub” or any variation thereof;
3. Respondent purchased <hubgrub.com> because “the hub” is a nickname for
4. Respondent is a professional website designer;
5. “Hubgrub.com” and “GRUBHUB” can be analyzed letter by letter
and there is only one letter that is shared between the two terms; the two
terms are, at most, merely anagrams; they are not even phonetically similar;
6. Respondent has paid value for <hubgrub.com> and this gives him property rights in <hubgrub.com>;
7. Respondent has a First Amendment right to free speech, which
he practices with <hubgrub.com>;
8. Respondent has used the website to practice his profession
as a website designer and to share jokes with his wife;
9. Respondent registered <hubgrub.com> on June 26, 2004, more than one month before
Complainant filed a 1(b) Intent to Use Application for the Servicemark
“GRUBHUB,” which, according to Complainant, was done on July 31, 2004;
10. Respondent cannot have registered <hubgrub.com> primarily for the purpose of disrupting the
business of a competitor because Respondent and Complainant are not competitors
and because Respondent had no knowledge of Complainant when Respondent
registered <hubgrub.com>;
11. Complainant is interacting with Respondent in bad faith.
C. Additional Submissions
Complaint further contends that:
1. Respondent fails to acknowledge the fact that GrubHub
registered <grubhub.com> on November 6, 2002, almost two years before
Respondent registered <hubgrub.com>.
Respondent further contends that:
1. Respondent bears no burden to prove his professional use of <hubgrub.com>. Complainant bears the burden of proving that
he has no right or legitimate interest in <hubgrub.com>;
2. Complainant has said nothing to rebut Respondent’s assertion
that Complainant has filed his Complaint in bad faith.
FINDINGS
1) Complainant
has failed to meet its burden to prove by a preponderance of the relevant,
admissible evidence that Respondent’s Domain Name is confusingly similar to a
trademark or service mark in which Complainant has rights.
2) Complainant
has failed to meet its burden to prove by a preponderance of the relevant,
admissible evidence that Respondent has no rights or legitimate interest in
respect of the Domain Name.
3) Complainant has failed to meet its
burden to prove by a preponderance of the relevant, admissible evidence that
Respondent’s Domain Name has been registered and are being used in bad faith.
DISCUSSION
Paragraph 15(a) of the
Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs
this Panel to “decide a complaint on the basis of the statements and documents
submitted in accordance with the Policy, these Rules and any rules and
principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that
the Complainant must prove each of the following three elements to obtain an
order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and is being
used in bad faith.
Complainant GrubHub, Inc. is a
Thus, Complainant has not proven by a
preponderance of the evidence that it “has rights in a service mark” with which
Respondent’s Domain Name is identical or confusingly similar. Under such circumstances, Complainant cannot
prevail even if it could prove the two additional required prongs of a UDRP
Claim.
While no further analysis is required, this
Panel also does not see that the Domain Name hubgrub.com is identical or
confusingly similar to the Service Mark GRUBHUB® and as the Domain Name was
registered on June 26, 2004, prior to the July 31, 2004 USPTO Application, by
the Mark Applicant (now Registrant), there is also no bad faith in the
Registration of the Domain Name.
While the parties’ submissions raise any number of interesting legal and factual issues,
this Panel need not opine on them.
The Panel finds that Complainant has not
established a prima facie case that
Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v.
HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding
that the complainant did not satisfactorily meet its burden and as a result
found that the respondent had rights and legitimate interests in the domain
name under UDRP ¶ 4(a)(ii).)
The Panel finds that Respondent did not
register the <hubgrub.com>
domain name in bad faith under Policy ¶ 4(a)(iii). See
Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000)
(finding no bad faith where the respondent registered the domain name in
question before application and commencement of use of the trademark by the
complainant); see also Telecom Italia
S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum May 16, 2007) (finding
the respondent could not have registered or used the disputed domain name in
bad faith where the respondent registered the disputed domain name before the
complainant began using the mark).
Even though the Panel found that Complainant
has failed to satisfy its burden under the Policy, this does not necessarily
render a finding of reverse domain name hijacking.
DECISION
Having failed to establish all three elements
required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
M. KELLY TILLERY, ESQUIRE, Panelist
Dated: July 20, 2010
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