Old Seminole Heights Neighborhood Association
Claim Number: FA0907001272428
Complainant is Old Seminole Heights Neighborhood Association Inc. (“Complainant”),
represented by Bradford A. Patrick, of Chamberlin Patrick PA,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oldseminoleheightsfoundation.org>, registered with GoDaddy.com, Inc.
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.
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 firstname.lastname@example.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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. Although Complainant asserts it has not registered the
2. Complainant asserts that geographic marks, although descriptive, can be subject to protection if they have acquired secondary meaning.
3. Complainant has used “
4. Complainant has engaged in a wide range of physical and electronic advertising.
5. Complainant has undertaken to promote the “
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
9. Complainant asserts that Florida Unfair Competition laws apply to this case.
1. Complainant does not have rights in any trademark or service mark which the Respondent is allegedly using.
2. Complainant’s name is not “
3. Complainant does not allege a
registered mark in the term “
4. Complainant has failed to meet its burden to prove secondary meaning.
5. Complainant is claiming a mark
solely in the geographic descriptor. “
6. Complainant’s activities are in
furtherance of promoting
7. Complainant has failed to previously assert its alleged
rights against other entities utilizing the term “
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
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
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.
Complainant asserts common law rights to the
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,
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
According to the
attached evidence, this Panel finds that “
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
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
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)).
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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