Castaways Bar, LLC v. WetWorks, LLC
Claim Number: FA1310001525801
Complainant is Castaways Bar, LLC (“Complainant”), represented by Carl Spagnuolo of McHale & Slavin, P.A., Florida, USA. Respondent is WetWorks, LLC (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <squaregrouper.com> (“the Domain Name”), registered with NETWORK SOLUTIONS, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Alan L Limbury as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 21, 2013; the National Arbitration Forum received payment on October 21, 2013.
On October 22, 2013, NETWORK SOLUTIONS, LLC. confirmed by e-mail to the National Arbitration Forum that the Domain Name is registered with NETWORK SOLUTIONS, LLC. and that Respondent is the current registrant of the Domain Name. NETWORK SOLUTIONS, LLC. has verified that Respondent is bound by the NETWORK SOLUTIONS, LLC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 22, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 12, 2013 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 email@example.com. Also on October 22, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 November 11, 2013.
On November 19, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Alan L Limbury as Panelist.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
Complainant operates a bar and restaurant in Jupiter, Florida under the name SQUARE GROUPER TIKI BAR, in which Complainant claims exclusive trademark rights through use in interstate and international commerce since at least as early as January 26, 2003. The “TIKI BAR” component of the mark is a descriptive phrase and thus the distinctive portion of Complainant’s mark is “SQUARE GROUPER”.
Complainant’s “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 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”.
Complainant has expended substantial funds in promoting its “SQUARE GROUPER trademark” [sic] in various methods and has done so for at least 10 years, including at the establishment’s location, on all advertisements, printed promotional materials, menus and on Complainant’s website.
On September 9, 2013 Complainant filed an application with the USPTO to register the mark SQUARE GROUPER TIKI BAR (Serial No. 86/058,941).
The Domain Name is identical and confusingly similar in every material aspect to Complainant’s well-known “SQUARE GROUPER Tiki Bar” [sic] trademark and Respondent has no rights or legitimate interests in the Domain Name, which was registered and is being used in bad faith.
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.
Complainant has not demonstrated and cannot demonstrate that it has trademark rights in either SQUARE GROUPER TIKI BAR or SQUARE GROUPER. Complainant has not submitted any evidence that its SQUARE GROUPER TIKI BAR mark is famous nor any evidence concerning the scope of use or strength of its mark. Its own website uses the SQUARE GROUPER TIKI BAR mark, not SQUARE GROUPER by itself, which Complainant has never used in trade. Its trademark application was filed only a few weeks before the commencement of this proceeding. Complainant is not the sole and exclusive user of SQUARE GROUPER in either its home state of Florida or in the United States with respect to bar and restaurant services: see “The Square Grouper Bar and Grill” in Cudjoe Key Florida and “The Square Grouper” in Aspen Colorado.
There is no likelihood of confusion between the two parties’ use of the term SQUARE GROUPER, as portrayed in the Complaint. Respondent’s business is production of motion pictures and television shows so any confusion would be quickly dispelled.
As to legitimacy, Complainant has failed to carry its burden of proof.
Respondent is using the Domain Name in connection with a bona fide offering of goods and services. In July, 1998, Barry Rosen, one of Respondent’s principals, registered a “Treatment” (story line) for a motion picture and television show called “Square Grouper” with the Writers Guild of America West, Inc. (“WGA”). At approximately the same time it registered the Domain Name. Although Respondent cannot find any records from the original 1998 registration, it does have records reflecting renewal of the Domain Name registration in 2002 which indicate that Respondent was the registrant as early as 2001. In 2002 Respondent registered an updated Treatment with WGA and in 2004 negotiated an Option Agreement for the production rights to the said movie/television project. The project has not yet come to fruition, delays of many years being common in the movie business.
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 accepts that the Domain Name has resolved to a parking site that seems to indicate that the Domain Name is for sale but it has never been offered for sale to Complainant or anyone else and has never been merely “bait” for users looking for Complainant’s site. Respondent was unaware until this complaint that the registrar for the Domain Name has, without Respondent’s knowledge or consent, put information on the parking site that would seem to indicate that the Domain Name is for sale, and has taken advantage of the parked Domain Name to profit from links for which the registrar gets paid without the knowledge or participation of the rightful domain owner.
Further, Respondent moved in 2008 and updated its information with the Registrar but has tried in vain to have its Whois information updated.
As to bad faith, Complainant has failed to meet the required burden of proof. Respondent’s registration in 1998 pre-dated any rights in the mark Complainant might have, so Respondent could not have had the necessary knowledge or intent at the time of registration of the Domain Name as required under paragraphs 4(b)(i) and 4(b)(iv) of the Policy.
Respondent points to Complainant’s delay of more than 10 years in bringing this complaint and refers to the discussion of the equitable doctrine of laches in cases such as Galaxy Catering, Inc. d/b/a/ Big Texan Steak Ranch v. Whois Privacy Protection Service, Inc. / Whois Agent, FA1211001470990 (Nat. Arb. Forum October 22, 2013).
Complainant has failed to establish all three elements entitling it to transfer of the Domain Name.
Paragraph 15(a) of 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 Complainant must prove each of the following three elements to obtain an order that the Domain Name should be cancelled or transferred:
(1) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Paragraph 4(a)(i) of the Policy does not require the Complainant’s trademark rights to have arisen before the Domain Name was registered: see Valve Corporation v. ValveNET, Inc., ValveNET, Inc., Charles Morrin, WIPO Case No. D2005‑0038 and the cases there cited.
Complainant’s SQUARE GROUPER TIKI BAR trademark application filed in September, 2013 does not itself give rise to any trademark rights: see Aspen Grove, Inc. v. Aspen Grove, WIPO Case No. D2001-0798 and Spencer Douglass MGA v. Absolute Bonding Corporation, WIPO Case No. D2001-0904. There is no evidence to support Complainant’s description of its mark as “registered”.
The wording of the Complaint gives the impression that Complainant is claiming trademark rights, through use in trade and commerce, in both SQUARE GROUPER TIKI BAR and SQUARE GROUPER. However, none of the materials put in evidence by Complainant, including its website, menus etc, provide any evidence that Complainant has ever used SQUARE GROUPER as a trademark.
This Panel has visited Complainant’s website at <www.squaregrouper.net>, where the “History” page contains the following statement:
“Square Grouper is the name reportedly given by members of the US Coast Guard to bales of marijuana thrown overboard or out of airplanes, that were often found along the Jupiter Inlet and other waterways in South Florida”.
Since a grouper is a large fish, one can understand how floating bales of marijuana came to be so described. There is accordingly nothing inherently distinctive about the words “Square Grouper” and it is not surprising that there is a restaurant called “The Square Grouper Bar and Grill” in Cudjoe Key Florida and a restaurant called “The Square Grouper” in Aspen Colorado.
The Panel accepts that Complainant has used SQUARE GROUPER TIKI BAR as a trademark since at least as early as January 26, 2003 and that it registered the domain name <squaregrouper.net> on August 16, 2003 when it found itself unable to register the Domain Name by reason of Respondent’s prior registration.
The Panel is prepared to accept that Complainant has acquired common law rights in the trademark SQUARE GROUPER TIKI BAR through use.
The test of confusing similarity under the Policy is confined to a comparison of the Domain Name and the trademark alone, independent of the other marketing and use factors, such as the "Sleekcraft factors"—AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 346 (9th Cir. 1979)—usually considered in trademark infringement or unfair competition cases. See Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001). See also the similar approach adopted by the U.S. Federal court in Northern Light Tech., Inc. v. N. Lights Club 2000 U.S. Dist. LEXIS 4732 (D. Mass. March 31, 2000).
Confusion in this context, in the sense of bewilderment or failing to distinguish between things, may be regarded as a state of wondering whether there is an association, rather than a state of erroneously believing that there is one. An appropriate formulation might be: “Is it likely that, because of the similarity between the domain name on the one hand and the Complainant’s trademark on the other hand, people will wonder whether the domain name is associated in some way with the Complainant?” SANOFI-AVENTIS v. Jason Trevenio, WIPO Case No. D2007‑0648.
Since the words SQUARE GROUPER are common to both Complainant’s SQUARE GROUPER TIKI BAR mark and the Domain Name, the Panel accepts that some Internet users might wonder whether there is an association between them. Accordingly, the Panel finds the Domain Name to be confusingly similar to Complainant’s mark.
Complainant has established this element.
Complainant’s assertion that Respondent apparently routinely traffics in domain names for the purpose of speculation and resale profiteering is not borne out by the Reverse Whois Lookup indicating that Respondent owns 22 domain names.
However, Complainant’s other assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in the Domain Name on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in that name: Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 and the cases there cited.
Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, would establish Respondent’s rights or legitimate interests to the Domain Name. Respondent relies on the circumstances specified in sub-paragraph 4(c)(i):
“before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;”
Even perfunctory preparations have been held to suffice for this purpose: Lumena s-ka so.o. v. Express Ventures LTD, NAF Claim No. 94375.
Respondent has shown that Mr. Barry Rosen, one of Respondent’s principals in the movie business, registered a story line for a proposed motion picture and/or television show entitled SQUARE GROUPER with WGA in 1998 and that the Domain Name had been registered at least as early as 2002, a year prior to Complainant’s first claimed use of its SQUARE GROUPER TIKI BAR trademark. These facts, conducive to a finding in Respondent’s favour on this element, are at odds with the way in which the Domain Name has recently been used as a parking page, containing a statement that the Domain Name may be for sale and links to enterprises in Jupiter, Florida, where Complainant carries on business. Although Respondent denies knowledge, prior to this complaint, of the content of its website, the registrant of a domain name is generally held responsible for that content. See WIPO Overview 2, at ¶ 3.8.
In light of the Panel’s finding on the next element, it is unnecessary to determine whether Complainant has shown that Respondent lacks rights or legitimate interests in the Domain Name.
Under paragraph 4(a)(iii) of the Policy, Complainant is required to prove both registration in bad faith and use in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the both registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy. Complainant invokes circumstances 4(b)(i) and 4(b)(iv), i.e.
“(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.”
Annex 4b to the Complaint depicts Respondent’s website as at October 21, 2013. The first statement on the home page is: “This domain maybe for sale! Buy it now! Click here”. This statement in October 2013 does not establish that sale to Complainant or a competitor of Complainant was Respondent’s primary purpose in registering the Domain Name more than 10 years ago. Accordingly, paragraph 4(b)(i) of the Policy does not apply in this case.
Respondent’s website nevertheless appears recently to contain links to enterprises in Jupiter, Florida and links entitled “Square Grouper” and “Restaurant Bar and Grill”. Given that a registrant is generally responsible for the links which the Registrar placed on Respondent’s website, that website content is indicative of possible bad faith use of the kind described in paragraph 4(b)(iv) of the Policy, the possibility depending on whether such use was intentional on the part of Respondent.
It is unnecessary to determine whether such use was intentional on the part of Respondent. Although evidence of bad faith use of the kind described in paragraph 4(b)(iv) of the Policy is to be taken as evidence of bad faith registration as well as evidence of bad faith use, such evidence is not necessarily conclusive: Shirmax Retail Ltd./D¢etaillants Shirmax Lt¢ee v. CES Marketing Group Inc., AF-0104 (eResolution). The Panel may have regard to other evidence in determining whether the requirements of 4(a)(iii) have been proved. In this case there is other evidence as to the circumstances in which the Domain Name was registered, although the precise date on which it was registered to Respondent is unclear.
The Complaint annexes a Whois search showing the Domain Name registered in the name of Respondent and as having been created on October 11, 2007 (Complaint Annex 7). The Panel notes that the creation date shown in a Whois search is not necessarily the date of first registration of a domain name. For example, the date of a change of registrar is often shown as the creation date.
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 registered.
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.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <squaregrouper.com> domain name REMAIN WITH Respondent.
Alan L Limbury, Panelist
Dated: December 2, 2013
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