NATIONAL ARBITRATION FORUM

DECISION

Old Seminole Heights Neighborhood Association Inc. v. Seminole Heights Foundation c/o
Christie Hess
Claim Number: FA0907001272428

PARTIES
Complainant is Old Seminole Heights Neighborhood Association Inc.
(“Complainant”), represented by Bradford A. Patrick, of Chamberlin Patrick PA,
Florida, USA. Respondent is Seminole Heights Foundation c/o Christie Hess
(“Respondent”), Florida, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <oldseminoleheightsfoundation.org>, 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.

Hector A. Manoff as Panelist.

PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on
July 7, 2009; the National Arbitration Forum received a hard copy of the Complaint on
July 13, 2009.

On July 7, 2009, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration

Forum that the <oldseminoleheightsfoundation.org> 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 July 21, 2009, a Notification of Complaint and Commencement of Administrative

Proceeding (the “Commencement Notification”), setting a deadline of August 10, 2009
by which Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s
registration as technical, administrative and billing contacts, and to
postmaster@oldseminoleheightsfoundation.org by e-mail.
 A timely Response was received and determined to be complete on August 10, 2009.

On August 14, 2009, pursuant to Complainant’s request to have the dispute decided by a
single-member Panel, the National Arbitration Forum appointed Hector A. Manoff as
Panelist.

RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to
Complainant.

PARTIES’ CONTENTIONS
A. Complainant
1. Although Complainant asserts it has not registered the OLD SEMINOLE HEIGHTS
mark, it enjoys common law rights to its name “Old Seminole Heights” as a service mark
for its activities as a neighborhood association.
2. Complainant asserts that geographic marks, although descriptive, can be subject to
protection if they have acquired secondary meaning.
3. Complainant has used “Old Seminole Heights” in its current form since 1996 and,
previously, as “Old Seminole Heights Preservation Committee” since the mid 1980s.
4. Complainant has engaged in a wide range of physical and electronic advertising.
5. Complainant has undertaken to promote the “Old Seminole Heights” name and
develop its meaning on a sustained basis for more than twenty years.
6. Respondent has no legitimate rights in the use of the domain name
<oldseminoleheightsfoundation.org>, because it was stolen from an existing plan for
Complainant’s future use by an insider.
7. Complainant asserts that the domain name <oldseminoleheightsfoundation.org> was
registered in bad faith.
8. Complainant contends Respondent’s <oldseminoleheightsfoundation.org> domain
name is confusingly similar to Complainant’s OLD SEMINOLE HEIGHTS mark.
9. Complainant asserts that Florida Unfair Competition laws apply to this case.

B. Respondent
1. Complainant does not have rights in any trademark or service mark which the
Respondent is allegedly using.
2. Complainant’s name is not “Old Seminole Heights”, and it has never been, and is not
currently known by, the name “Old Seminole Heights”.
3. Complainant does not allege a registered mark in the term “Old Seminole Heights”.
4. Complainant has failed to meet its burden to prove secondary meaning.
5. Complainant is claiming a mark solely in the geographic descriptor. “Old Seminole
Heights” is a geographic term that has not acquired secondary meaning in favor of the
Complainant.
6. Complainant’s activities are in furtherance of promoting Old Seminole Heights as
neighborhood, not in identifying Complainant as brand product.
7. Complainant has failed to previously assert its alleged rights against other entities
utilizing the term “Old Seminole Heights”… since it did not have a trademark to protect.
 8. Respondent has rights and legitimate interests in the domain name because it filed,
previous to any action by the Complainant, a fictitious name registration of “Old
Seminole Heights Foundation” with the state of Florida.
9. Previous to the complaint being filed, Respondent has made demonstrable preparations
to use the domain name in connection with a bona fide offering by establishing bank
accounts, books, and taking in funds.
10. 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.
11. Complainant has not made any allegation as to 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.
12. Complainant has not made any allegation as to 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.
13. Complainant makes no showing of proof that its business has been disrupted or
interrupted by Respondent.
14. Complainant has not alleged any pattern of conduct by Respondent to prevent the use
of a name by the holder of a protected mark.
15. As regards the alleged confusion with Complainant, such confusion —to the extent
there was any— was not caused by the domain name in question.
16. Respondent asserts 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.

Preliminary Issue: Non-UDRP Legal Arguments

Complainant argues various legal points pursuant to Florida and Federal Law as they may
apply to the likelihood of consumer confusion, secondary meaning of a mark, tradename
protection within the territorial scope of the business, and unfair competition. While
Policy ¶ 4(k) allows the parties to litigate these points in court, the Panel finds that these
arguments are not applicable to this arbitration proceeding since the instant dispute is
governed by the UDRP and not by Florida and Federal Law. See Abbott Labs. v. Patel,
FA 740337 (Nat. Arb. Forum Aug. 15, 2006) (holding that assertions of trademark
infringement are “entirely misplaced and totally inappropriate for resolution” in a domain
name dispute proceeding because the UDRP Policy applies only to abusive
cybersquatting and nothing else).

FINDINGS AND 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.

Identical and/or Confusingly Similar

Complainant asserts common law rights to the name “OLD SEMINOLE HEIGHTS” as a
service mark. In order to do so, Complainant claims that such rights had been acquired
through intense use which subsequently developed secondary meaning.
Respondent alleges Complainant has not established common law rights through
secondary meaning because Complainant’s mark is actually OLD SEMINOLE
HEIGHTS NEIGHBORHOOD ASSOCIATION and not, as Complainant asserts, OLD
SEMINOLE HEIGHTS.

Respondent further contends that Complainant has not obtained common law rights
through secondary meaning because Complainant’s mark is made up entirely of
geographically descriptive terms. Respondent claims OLD SEMINOLE HEIGHTS
refers to the geographical origin of Complainant’s services.

According to the attached evidence, this Panel finds that “OLD SEMINOLE HEIGHTS”
is the name of a neighborhood.

In this regard, this Panel notes that geographically descriptive terms should be treated —
prima facie— as descriptive marks. Otherwise, other businesses within the same
geographical area should be prevented from using that name. See Pocatello Idaho
Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002)
("[G]eographical [sic] terms are rarely, if ever, protected by trademark law because to do
so would preclude others from using such words in a descriptive manner."); see also
Travel Berkeley Springs, Inc. v. Glens Country Estate, FA 96347 (Nat. Arb. Forum Feb.
16, 2001) (finding that the complainant could not have superior right to use of “Berkeley
Springs” to the exclusion of other entities, particularly where there were many other
businesses in Berkeley Springs that use “Berkeley Springs” as part of their business
name).

Furthermore, this Panel agrees with Respondent in 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." OBX-Stock, Inc. v.
Bicast, Inc., Nos. 06-1769, 06-1887 (4th Cir. Feb. 27, 2009) (quoted by Respondent).

In the opinion of this Panel, Complainant has not provided evidence that the public
clearly associates the OLD SEMINOLE HEIGHTS mark with Complainant, and not with
the neighborhood of that name.

Since Complainant has not satisfied Policy ¶ 4(a)(i) because it has failed to establish
rights in the mark, this Panel declines to analyze the other two elements of the Policy.
See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002)
(finding that because the complainant must prove all three elements under the Policy, the
complainant’s failure to prove one of the elements makes further inquiry into the
remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard
Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the
respondent’s rights or legitimate interests or its registration and use in bad faith where the
complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).

DECISION

Because Complainant has failed to provide sufficient evidence to establish that the
domain name registered by Respondent is identical or confusingly similar to a trademark
or service mark in which Complainant has rights, the Panel concludes that relief shall be
DENIED.

Accordingly, it is Ordered that the <oldseminoleheightsfoundation.org> domain name

be RETAINED by Respondent.

Hector A. Manoff, Panelist

Dated: August 26, 2009

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