When it comes to UDRP complaints, we often see cases in which the Respondents are completely absent, failing to present any sort of defense or argument. This was not the case in a recent National Arbitration Forum filing over the domain name squaregrouper.com, in which the Respondent fought back and was able to convince the NAF panel to deny the complaint.
The Complainant, Castaways Bar, LLC, apparently operates a bar and restaurant in Jupiter, Florida under the name SQUARE GROUPER TIKI BAR, the location for the filming of the famous Jimmy Buffet and Alan Jackson music videos “5 O’Clock Somewhere” and “Long, Long Way to Go”. The Complainant alleges that the Respondent has been holding the domain name in question “hostage” and routinely traffics in domain names for the purpose of speculation and resale profiteering.
In return, the Respondent questions the Complainant’s trademark rights in the mark, and also points out numerous other uses of “Square Grouper” by restaurants and bars throughout the country. In addition, the Respondent points to its long ownership of the domain name before the “sudden ambush” by the complainant, indicating that laches may apply in this case.
In its (rather lengthy) decision, the NAF panel addresses the issues raised by both parties. While finding that the Complainant HAS acquired common law rights in the trademark SQUARE GROUPER TIKI BAR through use, and that the domain name is confusingly similar to this mark, this was not enough to convince the panel to order than the domain name be transferred.
In fact, the panel goes a step further to conclude that not only was the Respondent not guilty of cybersquatting, but that the Complainant is guilty of reverse domain name hijacking (RDNH). The panel states that its finding of RDNH is based on the Complainant’s actions of filing a UDRP complaint in an attempt to deprive the registrant of the domain name, despite knowing it wasn’t registered in bad faith.
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