Shf Icann Response

OLD SEMINOLE HEIGHTS NEIGHBORHOOD ASSN. INC., a Florida Corporation, (Complainant) v. SEMINOLE HEIGHTS FOUNDATION, INC. c/o CHRISTIE HESS, (Respondent)

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Domain Names In Dispute: oldseminoleheightsfoundation.org Case Number: FA0907001272428

RESPONSE [1.] Respondent received a Notification of Complaint and Commencement of Administrative Proceeding on July 21, 2009. The Notification stated that Complainant had submitted a Complaint for decision in accordance with the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 and approved by ICANN on October 24, 1999 (ICANN Policy), and the Rules for Uniform Domain Name Dispute Resolution Policy (ICANN Rules), adopted by ICANN on August 26, 1999 and approved by ICANN on October 24, 1999, and the National Arbitration Forum (NAF) Supplemental Rules (Supp. Rules). ICANN Rule 4. [2.]

RESPONDENT INFORMATION [a.] [b.] [c.] [d.] [e.]

Name: Address: Telephone: Fax: E-Mail:

Seminole Heights Foundation, Inc. c/o Christie Hess 1011 E Broad Street, Tampa, Florida 33604 (813) 503-4877 (510) 291-9254 [email protected]

RESPONDENT AUTHORIZED REPRESENTATIVE [a.] Name: Seminole Heights Foundation, Inc. c/o Christie Hess [b.] Address: 1011 E Broad Street, Tampa, Florida 33604 [c.] Telephone: (813) 503-4877 ICANN_Response_FA0907001272428.doc

FA0907001272428

[d.] [e.]

Fax: E-Mail:

(510) 291-9254 [email protected]

The Respondent’s preferred method for communications directed to the Respondent in the administrative proceeding: ICANN Rule 5(b)(iii). Electronic-Only Material [a.] Method: e-mail [b.] Address: [email protected] [c.] Contact: Christie Hess Material Including Hard Copy [a.] Method: post [b.] Address/Fax: 1011 E Broad Street, Tampa, Florida 33604 [c.] Contact: Christie Hess The Respondent chooses to have this dispute heard before a single-member administrative panel as stated in the Complainant’s Complaint; ICANN Rule 5(b)(iv). [3.]

RESPONSE TO FACTUAL AND LEGAL ALLEGATIONS MADE IN COMPLAINT

This Response specifically responds to the statements and allegations contained in the Complaint and includes any and all bases for the Respondent to retain registration and use of the disputed domain name. ICANN Rule 5(b)(i). [Elements of the UDRP are as follows:] [a.]

[Specify in the space below the manner in which the domain name(s) is not/are not identical or confusingly similar to a trademark or service mark in which the Complainant has rights.] ICANN Rule 3(b)(ix)(1); ICANN Policy ¶ 4(a)(i).

This policy specifically requires that for a Complainant to seek a remedy the Complainant must have rights in the disputed domain name. However, Complainant does not have rights in any trademark or service mark which the Respondent is allegedly using. Complainant’s name is the “Old Seminole Heights Neighborhood Association” (also know by the acronym “OSHNA”); Complainant’s name is not “Old Seminole Heights”, and the Complainant has never been, and is not currently known by, the name “Old Seminole Heights”. Moreover, Complainant does not allege a registered mark in the term “Old Seminole Heights”. Because Complainant has not alleged a registered mark in the term “Old Seminole Heights Foundation” or “Old Seminole Heights” (and it is questionable whether they could obtain such registration, see 15 U.S.C. § 1052(e)(2)), they now futilely attempt to obtain rights through secondary meaning. However, courts have been reluctant to extend secondary meaning to geographically descriptive terms. One of the primary reasons is that such expansion would limit other commercial entities from within the same geographic boundaries from using the term. Courts have noted that other merchants who happen to operate in the same market have as much FA0907001272428

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desire to use the same geographic term for their own competing activities. Therefore, such geographic terms are treated like any other descriptive mark. A mark is primarily geographically descriptive if the primary significance of the term in the mind of the consumer is to indicate the geographic origin of the goods or services. See In re Nantucket, Inc., 677 F.2d 95 (C.C.P.A. 1982) In the instant case, the term Old Seminole Heights within the name Old Seminole Heights Neighborhood Association indicates solely the geographic origin of the Complainant’s services. The Courts, WIPO, and this Forum have all set extremely stringent tests for applying secondary meaning to a geographic term. In Welding Services v. Forman, prominently cited by Complainant in support of its position, the court actually denied the claim of secondary meaning. In doing so, the court quoted 15 U.S.C. 1052(f) stating that ‘a prima facie showing of secondary meaning requires a showing that the name has been used in connection with the proprietor’s goods or service continuously and substantially exclusively for five years.” (Emphasis added.) The court goes on to state that the test of whether a name has attained secondary meaning depends on the length and nature of the name's use, the nature and extent of advertising and promotion of the name, the efforts of the proprietor to promote a conscious connection between the name and the business, and the degree of actual recognition by the public that the name designates the proprietor's product or service. Conagra,Inc.v.Singleton, 743F.2d1508,1513(11thCir.1984) (Emphasis added.) Likewise, the following discussion from Land Scahen, WIPO Case No. D2002-0273, is representative of the analysis that previous panels have made regarding geographic descriptors: In many of the so-called geographic indicator cases, including two of the three on which Complainant relies, WIPO Case No. D2000-1767 () and WIPO Case No. D2000-0308 (), the domain name was not the geographic indicator itself but rather a trademark that included, as part of the mark, a geographic term (in these two cases, the name of a university). In such cases, it is the totality of the mark that is being protected, and not merely the name of the country, city, state or region. See also Consorzio del Prosciutto di Parma v. Domain Name Clearing Company, LLC, WIPO Case No. D2000-0629 (September 18, 2000) (<parmaham.com>); WIPO Case No. D2000-0638 (<manchesterairport.com>); WIPO Case No. D2000-1218 (<wemblystadiumonline.com>); WIPO Case No. D2000-1224 (<sydneyoperahouse.net>); WIPO Case No. D2001-0932 (<sydneymarkets.com>).

In the instant case, this would be the equivalent of Complainant claiming a protected mark in their entire name. However, in this case, as in those cited, the Complainant is claiming a mark solely in the geographic descriptor. The panel goes on to state: In this case, in contrast, the domain name is the geographic indicator itself. In such cases, most panels have denied complaints because of the absence of any trademark rights. Port of Helsinki vs. Paragon International Projects Ltd., WIPO Case No. D2001-0002 (February 12, 2001) (refusing to transfer <portofhelsinki.com> because geographic indicators are not per se trademarks, and Complainant failed to show any registered or common law trademark rights); Brisbane City Council v. Warren Bolton Consulting Pty Ltd, WIPO Case No. D2001-0047 (May 7, 2001) (); Teollisuuden Voima OY v Vastamäki, WIPO Case No. D2001-0321 (May 4, 2001) (). Significantly, at least one other panel has reached this same decision in a case involving a German geographic indicator. Stadt Heidelberg v. Media Factory, WIPO Case No. D2001-1500 (March 6, 2002) (denying transfer of because Complainant failed to show trademark rights in city name Heidelberg). As other panels have noted, e.g., WIPO Case No. D2001-0047 (), this conclusion is further supported by the discussion on "Geographical Identifiers" in "The Recognition of Rights and the Use of Names in the Internet Domain Name System," Report of the Second WIPO Internet Domain Name Process ("Report"). The Report notes that the "existing legal framework . . . was developed for, and applies to, trade in goods" (¶ 240), and declines to extend protection to pure geographic indicators. The Report also emphasizes the difficulty in integrating several different, and potentially conflicting, systems used FA0907001272428

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nationally to protect geographical indications. The Report’s reluctance to include geographic indicators within the scope of the UDRP reinforces the conclusion that geographic indicators, unless they also serve as trademarks, are not per se covered under the UDRP. Indeed, in the few cases where trademark rights have been found in a geographic name, it has been because the Complainant was able to show actual trademark rights. For example, the Complainant in Kur- und Verkehrsverein St. Moritz v. StMoritz.com, WIPO Case No. D2000-0617 (August 17, 2000) (<stmoritz.com>), had registered "St. Moritz" as a trademark in 27 countries, and the domain name was thus found to be identical to a trademark in which the Complainant had rights (although the complaint was denied because Respondent had a legitimate interest and there was no showing of bad faith). Similarly, in Excelentisimo Ayuntamiento de Barcelona v. Barcelona.com Inc., WIPO Case No. D2000-0505 (August 4, 2000) (), the third case on which Complainant relies, the Complainant was the owner of more than 1,000 trademarks in which the "distinctive character" was found to be the term "Barcelona." See also Skipton Building Society v. Colman, WIPO Case No. D2000-1217 (December 1, 2000) (<skipton.com>) (finding trademark rights because, despite fact that Skipton is a geographic indicator, it also is a registered trademark for Complainant building society); Lapponia Jewelry Oy vs Rautelin Oy, Case No D2000-1728 (January 22, 2001) () (notwithstanding Respondent’s assertion that Lapponia is a common term for Lapland which is the area located in the northern parts of Finland, Sweden, Norway and Russia, Complainant’s trademark registrations were sufficient proof of its trademark rights); City of Hamina v. Paragon International Projects Ltd., WIPO Case No. D2001-0001 (March 12, 2001) (<portofhamina.com>) (finding trademark rights because Port of Hamina was used as mark for shipping and port-related services, but denying transfer because Respondent had legitimate interest and did not register and use in bad faith), Government of Canada v. David Bedford a.k.a. DomainBaron.com, WIPO Case No. D2001-0470 (June 30, 2001) (canadacouncil.com, etc.) (finding trademark rights in 31 of 32 domain names under the Canadian Trademarks Act, although the Complainant provided services of a non-trading character, and excluding one domain name because Complainant had not used the alleged trademark since 1982).

See also City of Dearborn v. Mekled, FA 99602 (Nat. Arb. Forum Nov. 12, 2001) (finding insufficient evidence that “City of Dearborn” is a protected common law mark and, therefore, the request to transfer was denied); Gardner's Super Mkts. Inc. v. Ambassa Holdings, Inc., D2002-0253 (WIPO June 14, 2002) (“In determining whether the Complainant's mark has acquired secondary meaning, one must consider a variety of factors, including, but not limited to, advertising, promotion, sales, media coverage and the length, manner and exclusivity of use of the mark by the Complainant.” Emphasis added); Cyberimprints.com, Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding that Complainant failed to prove trademark rights at common law because it did not prove the CYBERIMPRINTS.COM mark was used to identify the source or sponsorship of goods or services or that there was strong customer identification of the mark as indicating the source of such goods or services). The legal analysis in the recently decided case of OBX-Stock, Inc. v. Bicast, Inc., Nos. 06-1769, 06-1887 (4th Cir., Feb. 27, 2009) is particularly instructive of the tremendous burden to be overcome to attain secondary meaning of a geographically descriptive mark. In that case, the plaintiff created the term OBX to represent the Outer Banks area of North Carolina. Over time, OBX became used synonymously with the term Outer Banks. Defendant began selling a sticker that said “OBX- Extreme” and plaintiff sued. The plaintiff (like Complainant) argued that the success of the geographic descriptor was mainly though its efforts. However, the Court noted that OBX failed to address the absence of secondary meaning. In its subsequent detailed discussion about secondary meaning, the Court stated that a finding of secondary meaning requires evidence that “the mark no longer causes the public to associate the goods with a particular place, but to associate the goods with a particular source." (Quoting from 148 F.3d at 421) Using this standard, the Court held that “In this case, the district court properly FA0907001272428

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characterized the record when it concluded that ’[t]here is simply no evidence in the record of this case that any consumer associates OBX with Plaintiff's products or Plaintiff itself.’ OBXStock never attempted to associate the geographically descriptive abbreviation for Outer Banks with its products or itself, but rather with the Outer Banks.” OBX at 11. The primary principal of OBX is that for secondary meaning to occur, the mind of the public must clearly associate the geographic location with the Complainant’s goods or services, not with the geographic location itself. Just as the public associates Kentucky Fried Chicken not with the state of Kentucky, but with the restaurant, Complainant must show that the public associates “Old Seminole Heights” with its products or services, not with the neighborhood of that name. Applying the facts set forth below to the legal standards discussed above clearly shows that “Old Seminole Heights” is a geographic term that has not acquired secondary meaning in favor of the Complainant. Indeed, even Complainant admits that the term is a geographic descriptor of a neighborhood on page 4 of the Amended Complaint. This is further confirmed on maps from Google maps, Yahoo Maps, Zillow.com and the City of Tampa. Its boundaries encompass close to 8,000 households and over 18,000 residents (see Wikipedia ). In contrast, OSHNA has a membership of between 300 and 500 residents, less than 3% of the residents of Old Seminole Heights, at best. Respondent has attached dozens of exhibits which show the term “Old Seminole Heights” being used to describe a geographic location and not being used substantially exclusively, or indeed in any way, to relate to Complainant. See attached exhibits, including, but not limited to: • Maps (Compound Exhibit 28) • Signs (Exhibits 29) • Real Estate References (Compound Exhibit 30) • Governmental References (Compound Exhibit 31) • Corporate Registration (Exhibit 32) • Assorted References (Compound Exhibit 33) • Affidavits of residents (Compound Exhibit 34) The plain fact is that when a person hears or reads the term “Old Seminole Heights”, they do not think of OSHNA, but of the geographic area the term represents. See Affidavits, (Compound Exhibit 34). It is not until the words “Neighborhood Association” are added that people think of OSHNA and the specific services they provide in that regard. Complainant has neither referred to nor submitted any documented evidence in support of its claim that the specific term “Old Seminole Heights” has acquired secondary meaning. The self-serving statements made by members of Complainant’s board neither identifies the people nor the usage in which the term acquires secondary meaning. In fact, in both statements offered by Complainant, admissions that “Old Seminole Heights” is used as a geographic area, the response logically means, “Yes, I live in this geographic area.” rather than “Yes, I belong to OSHNA.” (See Amended Complaint pages 3 and 4) An article in the Winter 2008 issue of American Bungalow magazine (See Exhibit 35) perfectly illustrates the use of “Old Seminole Heights” as a geographical descriptor of the neighborhood. The article, authored by Helen Harmon, Editor of Complainant’s newsletter and wife of Complainant’s current president, with contributions from former board members and current and FA0907001272428

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former committee chairs, opens by describing an article in the St Pete Times about the premier of a documentary about life in the early years of a Tampa neighborhood. Harmon writes: The neighborhood the [St Pete Times] article was referring to – the one featured in the film – is Old Seminole Heights, the largest of three once-contiguous neighborhoods (the other two are South Seminole Heights and Southeast Seminole Heights) that make up the area generally known to Tampans as Seminole Heights. On the city’s map of “Tampa Neighborhoods” (click on the “Neighborhood Locator” link at tampagov.net), it is a large, green irregular area shaped like a lopsided old tree with a canopy outlined by the meandering Hillsborough River on the west and north, N. 22nd St. on the east and Hillsborough Ave. on the south except where a narrow rectangular trunk descends between Florida Ave. and Interstate 275 to Martin Luther King Jr. Blvd., separating the South and Southeast neighborhoods. In area, it encompasses about nine square miles. In a sidebar article entitled “A Place to Grow Up”, written by Barbara Farrar, a resident of Old Seminole Heights since 1926 and who shares a residence with a member of Complainant’s board, she describes how she has had an “enjoyable ‘cat-bird seat’ from which to observe the magical metamorphosis of Old Seminole Heights.” She goes on to write “Old Seminole Heights was like a garden spot with old Florida yards, embellished with colorful flowers and shrubbery.” Back in the main article, Eric Krause, yet another member of Complainant’s board, is mentioned as moving his office into the area “[a]fter restoring many homes in Old Seminole Heights…”, again using “Old Seminole Heights” as a reference to a geographic description. While Harmon mentions the activities of Complainant in the article, these activities, like the activities of the plaintiff in OBX, are in furtherance of promoting Old Seminole Heights as neighborhood, not in identifying Complainant as brand product. See OBX at 10. Harmon even admits that Complainant’s porch parties are “a feature of historic neighborhoods throughout the Tampa-St. Petersburg area”, signifying that the services Complainant provides are not even unique. The overwhelming conclusion from the article, and from the fact that so many insiders of Complainant were involved in its creation, is that even Complainant identifies “Old Seminole Heights” as a neighborhood and not a brand. Moreover, Complainant has not demonstrated that it has ever even used the term “Old Seminole Heights” as a descriptive term for their association. To the contrary, Complainant’s newsletters, e-mails, membership cards, merchandise and all other activities undertaken by Complainant state “Old Seminole Heights Neighborhood Association”. (See attached Compound Exhibit 36.) In fact, Complainant only offers two products without the words Neighborhood Association appended to Old Seminole Heights. These product are a license plate frame bearing the phrase “Old Seminole Heights Historic and Friendly” and an oval car sticker, similar to the one developed by the plaintiff in OBX, with the abbreviation OSH. Just as in OBX, there has been no evidence presented that the use of “Old Seminole Heights” or “OSH” is meant to identify the items as products of Complainant instead of conveying a connection with the geographic area of Old Seminole Heights. Indeed, the clear connotation of these items is to identify that the owner of the vehicle to which they are affixed lives in, or has some other relationship with, the geographic area. FA0907001272428

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Finally, to the extent that Complainant has advertised or engaged in public relations activities using the term Old Seminole Heights, Complainant’s activities, like the plaintiff’s activities in OBX, were for the benefit of the geographic area and not meant to cause identification in the public mind with the Complainant itself. See OBX. Indeed, historically, OSHNA has never even considered claiming a trade or service mark in the term “Old Seminole Heights.” It is only upon realizing that one of the burdens on Complainant in this action is to have rights in the disputed domain name that this claim has suddenly materialized. In fact, Respondent has provided affidavits of the previous presidents of Complainant since October of 2000 stating that, while they were president, Complainant never contemplated having a protected mark in the term “Old Seminole Heights” or took any actions to assert or protect such mark. (See Compound Exhibit 34) However, even after Complainant’s board had authorized the filing of this ICANN action, OSHNA has not defended its alleged “rights” in the term “Old Seminole Heights”. The best example can be found in Complainant’s own actions. In May 2009 a 501(c)(3) organization named the “Old Seminole Heights Consortium” was formed. Notably, Complainant required that the new organization receive permission to use the OSHNA logo, but did NOT require permission to use the term “Old Seminole Heights”. (See Exhibit 37, May 2009 minutes of the Old Seminole Heights Neighborhood Association.) Additionally, OSHNA has failed to previously assert its alleged rights against other entities utilizing the term “Old Seminole Heights.” For example, in November 2007, a corporation by the name of “Old Seminole Heights Helper, Inc.” was formed utilizing the term “Old Seminole Heights” and no action was taken by Complainant. (See Exhibit 32) By continually allowing such infringement, and not diligently protecting its alleged trademark right, Complainant has effectively abandoned its right to challenge such use. See Breakers of Palm Beach v. International Beach Hotel Development, Inc., 824 F. Supp. 1584 (S.D. Fla. 1993) However, a much more likely and logical explanation is that Complainant did not have, nor did it believe it had, a trademark to protect. For example, according to Complainant’s web site, Old Seminole Heights is a geographic area and OSHNA “is the cohesive force within our boundaries and is our collective voice on a myriad of issues affecting our community” (See Exhibit 38)1 According to the letter Complainant recently sent with its membership cards, “Old Seminole Heights is a place you will be proud to call home”. (See Exhibit 36) According to the 2009 Home Tour Brochure, “we are featuring homes from the ‘Early Years’ of Old Seminole Heights.” And, of course, the many statements using “Old Seminole Heights” as a geographic description in the American Bungalow article discussed above. The claim of the Complainant is further rebutted by the Complainant’s own repeated sworn testimony given before the Tampa City Council and other city bodies. On each and every occasion when a representative of OSHNA has testified, they have stated their name and that they represent the Old Seminole Heights Neighborhood Association, not just Old Seminole Heights. However, when other members of the audience, who live in Old Seminole Heights but 1

On July 28, 2009, Complainant removed these statements from its website. However, Respondent has screen scrapes of Complainant’s original pages. Clearly, Complainant is trying to cover its tracks. FA0907001272428

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are not representatives of OSHNA, testify, they will generally state their name and address and typically state that they are a resident of Old Seminole Heights. The legal standards described above require that Complainant show that the term “Old Seminole Heights” transcends the obvious geographic description of an established neighborhood and become, in the mind of the public, substantially exclusively related to the neighborhood association and the services they offer. However, all of the examples provided by Respondent clearly show that Complainant cannot meet this burden, that the term is a geographic descriptor and that it thus is not a protected mark of the Complainant. Based upon the above, Complainant has failed to meet its burden to prove secondary meaning as required by previous cases. Without a registered trademark, or an acquired trademark through secondary meaning, the Complainant has no rights in the disputed name and therefore cannot satisfy UDRP sec 3(b)(ix)(1). Therefore, the complaint should be dismissed. [b]

[Specify in the space below why the Respondent (domain-name holder) should be considered as having rights or legitimate interests in respect of the domain name(s) that is/are the subject of the complaint.] ICANN Rule 3(b)(ix)(2); ICANN Policy ¶ 4(a)(ii).

Respondent has rights and legitimate interests in the domain name because the Respondent took all necessary actions under Florida law to secure the name for its use. Florida law requires the Respondent to register any name which it intends to use for a business purpose as either a corporation name or a fictitious name. The Respondent filed, previous to any action by the Complainant, a fictitious name registration of “Old Seminole Heights Foundation” with the state. (See Exhibit 39) Regardless of whatever intentions they may have had, it is undisputed that Complainant did not, has not, and, now, cannot, register either a corporate or fictitious name of “Old Seminole Heights Foundation.” [The Panel may consider any relevant aspects included in, but not limited to ICANN Policy ¶ 4(c): (i.) Whether, before any notice to the Respondent of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name is in connection with a bona fide offering of goods or services; or Previous to the complaint being filed, Respondent has made demonstrable preparations to use the domain name in connection with a bona fide offering. The attached fictitious name registration was filed as required under Florida law previous to the complaint (See Exhibit 39). The filing of this registration allows the Respondent to conduct business under this name through the Respondent’s other business entities. Through those entities the Respondent had established bank accounts, books, and taken in funds in furtherance of Respondent’s charitable goals. Additionally the Respondent has filed with the IRS to be recognized as a 501c-3. FA0907001272428

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(ii.) Whether Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if Respondent has not acquired trademark or service mark rights; or (iii.) Whether Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.] Complainant has made no showing that Respondent intends to mislead or divert any of Complainant’s consumers (its members) or to tarnish any trademark of the Complainant. In fact, in its complaint, Complainant specifically states that Respondent had stated publicly before the complaint was filed that it was Respondent’s goal to “fill in gaps” that the Complainant could not provide. [c.]

[Specify in the space below why the domain name(s) should not be considered as having been registered and being used in bad faith.] ICANN Rule 3(b)(ix)(3); ICANN Policy ¶ 4(a)(iii). [The Panel may consider any relevant aspects included in, but not limited to ICANN Policy ¶ 4(b): (i.)

Whether there are circumstances indicating that Respondent has registered or has 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 Respondent’s documented out-of-pocket costs directly related to the domain name; or NO SUCH ALLEGATION IS MADE BY THE COMPLAINANT (ii.)

Whether Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or NO SUCH ALLEGATIONS ARE MADE BY THE COMPLAINANT (iii.)

Whether Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

Consistent with the rest of its complaint, Complainant makes no showing of proof that its business has been disrupted or interrupted by the Respondent. The Complainant has shown no decrease in membership sales resulting from Respondent’s site, no decrease in merchandise sales, and no confusion among the Complainant’s customers. In fact, Respondent is not in, nor does Respondent desire to be in, the same business as Complainant. Complainant specifically quotes a member of Respondent’s board whom, prior to the commencement of this action, stated publicly that Respondent’s goal was “filling gaps” left by the Complainant. Indeed, the customers of the two groups are dissimilar. Complainant, as a neighborhood association, represents and provides services to its members as defined in its bylaws, and sells memberships FA0907001272428

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to businesses and individuals. On the other hand, Respondent sells no memberships. They raise tax-exempt funds to provide neighborhood improvements to better the community. The target market of each organization is fundamentally different. Additionally, the Respondent does not sell any of the merchandise referred to in the argument A,2 section of the complaint. Furthermore, contrary to Complainant’s assertions that they are recognized by the city of Tampa simply as “Old Seminole Heights”, Complainant offers no evidence of such an assertion other than self-serving, unsubstantiated, anecdotal statements made by members of Complainant’s board. In-fact, all city materials which identify neighborhood associations refer to Complainant not as “Old Seminole Heights” but as the “Old Seminole Heights Neighborhood Association.” See Exhibit 31. (iv.) Whether by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site 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 Respondent’s web site or location or of a product or service on Respondent’s web site or location.] The alleged confusion which the Complainant claims fails on two grounds. The Complainant only offers one example of confusion based upon an email that was sent to the 3 founders of Respondent along with Complainant’s president. (Exhibit 40) The email offered congratulations on the launch of the Foundation and noted that the city employee had been contacted by the St. Pete Times who related the purpose and shared the press release. The city employee went on to say that she was not aware of this initiative but was not surprised that “Seminole Heights was leading this effort.” At no time did the city employee mention the words “Old Seminole Heights” and indeed nowhere in the initial press release was the term “Old Seminole Heights” utilized. Therefore, this alleged confusion is irrelevant to the instant proceeding. Secondly, the alleged actual confusion was not by a customer, which is in-fact the legal test, but to a city employee. According to OSHNA’s own mission statement, their goal is to represent the neighborhood not the city of Tampa, and in fact OSHNA has no authority to represent the city. Regardless, to the extent there was any confusion, such confusion was not caused by the domain name in question. More importantly, the one thing made clear in the community is that there is definitely no confusion in the mind of any resident that these organizations are not affiliated. While it is not the Respondent’s job to show a lack of confusion (the burden rests solely on the Complainant), blog sites and newspaper articles indicate that the community is fully aware that the parties are in no way affiliated. Conclusion In order for the Complainant’s action to be successful, it is required to satisfy all three elements of UDRP sec 4a. Failure of even one section requires a finding in favor of the Respondent. In this case, Complainant has not met its burden in one, let alone all, of the sections. i. Confusingly Similar to a Protectable Right

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Complainant has failed to show that it has any protectable mark to which the domain name is identical or confusingly similar to. Complainant admits that it has no registered trade or service mark in Old Seminole Heights or Old Seminole Heights Foundation. Complainant does not even have a registered trade or service mark on Old Seminole Heights Neighborhood Association or, as it is commonly referred to, OSHNA. It attempts to bootstrap a protectable mark out of a house of cards of secondary meaning followed by a specious claim of natural expansion. However, not one piece of evidence is offered showing the required “substantially exclusive” use of the term “Old Seminole Heights”, and the resulting recognition in the mind of the public, except for the self-serving, uncorroborated statements of two members of the Complainant’s board. The reason no evidence is offered is that no evidence exists. The majority of merchandise, and all e-mail blasts (limited to a recipient list of under 1,000), newsletters, home tour brochures, etc referred to in the Amended Complaint bore the mark of “Old Seminole Heights Neighborhood Association.” The two pieces of merchandise that do use the terms “Old Seminole Heights” or “OSH” use the terms to refer to the geographic area of the neighborhood, not as a brand of the Complainant. Additionally, Complainant’s own representatives testifying before City Council, and other city boards, always represented themselves as a member of the association, in contrast to those testifying and identifying themselves as living in the geographic area of “Old Seminole Heights.” In marked contrast, Respondent has attached as exhibits numerous examples from nationally known mapping and real estate websites, city of Tampa documents, Hillsborough County Property Assessor documents, corporate registrations, signs, affidavits of residents and Complainant’s own literature where “Old Seminole Heights” has been used and is perceived by the public solely as a geographic descriptor. It is a descriptor that was in use long before Complainant was ever formed. It is available for OldSeminoleHeightsPizzeria.com, OldSeminoleHeightsRealty.com or OldSeminoleHeightsHelpers.org, just as it is available for Respondent’s domain name. It describes the neighborhood where these goods or services will be offered. It describes the neighborhood in which the Respondent’s founders continue to live even after they were expelled by Complainant, as related in the Amended Complaint. As discussed in the analysis above, both the courts and arbitration forums under the UDRP have set extremely high burdens for applying secondary meaning to geographic descriptors. In this case, we submit that Complainant has absolutely no basis for a claim of secondary meaning. Moreover, as discussed above, the domain name is not identical nor is it confusingly similar. Complainant offered only one example of confusion, again without submitting any documentation. However, the cited example involved a press release, not a domain name or a mark. Furthermore, the term “Old Seminole Heights” was not mentioned in the email that formed the basis of the alleged confusion. Complainant cites not one other case of confusion during the four subsequent months until this action was filed. Again, this is because there has been no confusion. Additionally, no confusion can occur because the entirety of the domain name is specifically descriptive of Respondent’s organization and not that of the Complainant. The Respondent is a non-profit foundation that has applied for 501(c)(3) charitable status with the IRS for the purpose of soliciting tax-deductible donations for projects benefiting Seminole Heights, including Old, South and Southeast Seminole Heights. Complainant, on the other hand, is a neighborhood FA0907001272428

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association that represents a paid membership and which cannot solicit tax-deductible donations. The two organizations are not in competition and serve two distinctly different “customers”. Indeed, it would be Complainant’s use of the term “Foundation” that would not only be confusing, but deceiving.

ii. Respondent has rights As detailed above, Respondent is the only entity that has rights to use “Old Seminole Heights Foundation” because it is registered by Respondent with the State of Florida as a fictitious name. Ironically, had Complainant registered the domain name in question, it would be the entity without rights.2 Additionally, prior to any notice of this dispute, Respondent has actually used the domain name in connection with a bona fide offering of its services. It is in fact the Complainant who cannot show any rights to the use of the domain name. iii. Bad Faith As described previously, Respondent is actually using the domain in a bona fide offer of its services. Moreover, it has not, nor does it intend in the future, to offer for sale the disputed name to the Complainant. Respondent intends to continue to use the domain name for the legitimate purpose it has engaged in since its inception. Nor has Complainant alleged any pattern of conduct by Respondent to prevent the use of a name by the holder of a protected mark. Furthermore, Complainant’s unsubstantiated and defamatory allegations of theft set forth in the Amended Complaint, are irrelevant to this proceeding. Regardless of its claims, Complainant had in fact not formed a foundation at the time of Respondent’s creation. Indeed, any action in this regard by the Complainant is pure speculation. In its own complaint it admits that only two committee meetings and a presentation had occurred and that the concept still had to be presented to the membership. Who knows what the membership may have decided. 3 Furthermore, Complainant admits that they would need to make substantial changes to their organization in order to qualify as a 501(c)(3). There were questions of the impact of tax implications of having a c3, what activities of the Complainant would potentially conflict with non-profit status, its failure to file form 990 tax returns in previous years, and the very form of a proposed c3 – convert OSHNA or form a separate corporation, and the subsequent modification of its articles of incorporation and bylaws. No one, not even Complainant, knows whether or not 2

Moreover, to the extent that Complainant states that they are known as, have promoted themselves as and held themselves out to the public as “Old Seminole Heights”, OSHNA has violated Florida law and should not be rewarded: Florida statues 865.09 states that “A person may not engage in business under a fictitious name unless the person first registers the name with the division by filing a sworn statement listing:”…… furthermore section 9 (c) states that: “Any person who fails to comply with this section commits a misdemeanor of the second degree, punishable as provided in s. 7, 3 For example, during the first eight months of 2008, Complainant’s Bylaws Committee met over 20 times, in contrast to the few times the 501(c)(3) Committee met, to draft proposed amendments to its existing Bylaws. Despite the recommendations of the committee and the full board, the membership rejected the proposed change. FA0907001272428

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it would have moved forward and, if so, in what form. After all, as noted in its Amended Complaint, Complainant had not moved forward in this regard in close to 20 years. This also defeats any claim of natural expansion since the very nature of the organization would have had to have been changed for the Complainant to obtain non-profit status from the IRS. However, this is all irrelevant because, prior to any action of the Complainant, Respondent DID legally incorporate, DID legally register the fictitious name, and DID legally register all of their domain names, including the one in dispute, and has continuously engaged in a legitimate business purpose. In conclusion, Complainant has not presented any factual or legal basis to prevail in this action. [4.]

OTHER LEGAL PROCEEDINGS

There are no other legal proceedings at this time. ICANN Rule 5(b)(vi). [5.]

RESPONSE TRANSMISSION

The Respondent asserts that a copy of the Response, as prescribed by NAF’s Supplemental Rules, has been sent or transmitted to the Complainant, in accordance with ICANN Rule 2(b). ICANN Rule 5(b)(vii); NAF Supp. Rule 5. [6.] The Respondent respectfully requests that the Administrative Panel denies the remedy requested by the Complainant. Additionally, Respondent respectfully requests a finding that the complaint was brought in bad faith, as an attempt by Complainant to reverse domain name hijack and to harass the domain name holder, and therefore constitutes an abuse of the administrative proceeding. Given that even if there was a finding by this panel that the Complainant should be awarded the domain name, the fictitious name registration held by Respondent still remains and therefore Complainant cannot now nor will they ever be able to use the disputed domain name. Respondent’s bad faith in filing the complaint is further evidenced by their recent and sudden change of their own web site to remove references to Old Seminole Heights as a geographical area and to mislead this panel into believing that they, in fact, have a trade mark in the name of Old Seminole Heights. This clearly leads to the conclusion that the sole purpose of this complaint is to harass the domain name holder. It should also be brought to the light of this panel that the complainant has a history of using threats and intimidation tactics against those who disagree with their position. Besides the removal of former members (including its two most recent presidents), Complainant has taken affirmative steps to interfere with the formation of new neighborhood organizations within its boundaries. ICANN Rule 15(e). [7.]

CERTIFICATION

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