OLD SEMINOLE HEIGHTS ) NEIGHBORHOOD ASSN. ) INC., a Florida Corporation, ) Complainant ) v. ) In Re oldseminoleheightsfoundation.org SEMINOLE HEIGHTS ) FOUNDATION, INC. c/o ) CHRISTIE HESS, ) Respondent ) ) AMENDED COMPLAINT IN ACCORDANCE WITH THE UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY [1.] This Complaint is hereby submitted 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, November 1, 2007). ICANN Rule 3(b)(i). [2.1] COMPLAINANT INFORMATION [a.] Name: Old Seminole Heights Neighborhood Association, Inc. (OSHNA) [b.] Address: P.O. Box 360022, Tampa, Florida 33673 [c.] Telephone: 813-857-5497 [e.] E-Mail: [email protected] [2.2] COMPLAINANT COUNSEL Pursuant to ICANN Rule 3(b)(ii), all communication should be directed to the undersigned counsel. [a.] Name: Bradford A. Patrick, Esq. [b.] Address: Chamberlin Patrick PA, 3001 N. Rocky Point Dr. E, Suite 200, Tampa, Florida 33607 [c.] Telephone: (813) 374-2216 [d.] Fax: (813) 234-4510 [e.] E-Mail: [email protected] The Complainant’s preferred method for communications: Electronic-Only Material [a.] Method: Email [b.] Address: [email protected] [c.] Contact: Bradford A. Patrick, Esq. Material Including Hard Copy [a.] Method: Fax [b.] Address/Fax: (813) 234-4510 [c.] Contact: Bradford A. Patrick, Esq. The Complainant selects a single-member administrative panel pursuant to ICANN Rule 3(b)(iv). [3.] RESPONDENT INFORMATION [a.] Name: Seminole Heights Foundation, Inc. c/o Christie Hess1 [b.] Address: 1011 E Broad Street, Tampa, Florida 33604 [c.] Telephone: (813) 237-8808 [e.] E-Mail: [email protected] On information and belief, Respondent does not have legal counsel as an authorized representative in the administrative proceeding. ICANN Rule 3(b)(v). [4.] DISPUTED DOMAIN NAME(S) [a.] The following domain name(s) is/are the subject of this Complaint: ICANN Rule 3(b)(vi). OLDSEMINOLEHEIGHTSFOUNDATION.ORG [b.] Registrar Information: ICANN Rule 3(b)(vii). [a.] Name: GoDaddy.com, Inc. [b.] Organization: GoDaddy.com [c.] Address: 14455 N. Hayden Rd., Suite 219, Scottsdale, AZ 85260 [d.] Telephone: (480) 505-8899 [f.] E-Mail: [email protected] [c.] Trademark/Service Mark Information: ICANN Rule 3(b)(viii). OSHNA enjoys common law rights to its name “Old Seminole Heights” as a service mark for its activities as a neighborhood association. It is not the subject of federal trademark registration, but is protectable nonetheless.2 1 Ms. Hess is understood to be the Administrative Contact for SHF. OSHNA understands GoDaddy to have confirmed Seminole Heights Foundation, Inc. is the confirmed registrant of the domain. 2 Common law trademark claims form a sufficient basis for a Complaint under paragraph 4(a)(i) of the Policy. The Policy does not require that the Complainant should have a registered trademark or service mark. It is sufficient that the Complainant should satisfy the Administrative Panel that Complainant has rights in common law trademark: WIPO/D2000- 0210. See also WIPO/D2001-0059; WIPO/D2000-1764. Accord Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188, 1193 C.A.11 (Fla.), 2001. OSHNA UDRP COMPLAINT - 2 - [5.] FACTUAL AND LEGAL GROUNDS Background This is a dispute between two local neighborhood organizations in Tampa, Florida. Complainant, OSHNA, is an officially recognized neighborhood association with an established membership of more than 500 active members representing approximately 400 families. Since records have been kept, more than 2000 individuals at more than 1600 addresses have been members. OSHNA sponsors annual events including the “Paint Your Heart Out” event for low-income elders, a children’s Pumpkin Parade, decorating events, holiday dinner and holiday carolers concert. For eleven years, it has brought more than 1,000 visitors to the neighborhood for its annual Home Tour of distinctive bungalow-style homes. The annual budget this year is in the neighborhood of fifty thousand dollars, up from $6775 in 2000. Candidate forums occur in election years, and quarterly general membership meetings are heavily advertised and attract large turnouts. More than a decade of goodwill in OSHNA is likewise reflected in the thousands of volunteer hours put in each year. This year alone more than 3,000 hours of volunteer time has been contributed to date. OSHNA sends out mailers and ballots to a list of subscribers numbering more than 500 for a total of more than 4,700 pieces annually. Email has been sent by OSHNA since 1998. Today messages are sent to a list of more than 825 individuals. Since a change of system software in 2007, OSHNA has sent more than 300 items comprising more than 225,000 emails altogether. Its newsletter The Advisor is also distributed in paper form to a circulation of more than 500. OSHNA is organized as a Florida 501c4 corporation, and has been recognized by the City of Tampa for more than twenty years. OSHNA also developed branding standards for the use of its name and logo in the local business community. In stark contrast, Respondent/ Registrant is a founder of a new corporation, the Seminole Heights Foundation (SHF), created in March, 2009 by former board members of OSHNA. The domain in dispute, oldseminoleheightsfoundation.org, was registered by Hess as founder of SHF and is a redirect for seminoleheightsfoundation.org, the primary domain of the new SHF organization. SHF is not a City of Tampa neighborhood association. The term “Seminole Heights” dates back to the early 1900’s and describes a geographic location around the intersection of Hillsborough Avenue and Central Avenue, north of downtown Tampa. Contemporary usage is inclusive of three separate, contiguous neighborhoods: Old Seminole Heights, South Seminole Heights, and Southeast Seminole Heights, each of which is individually recognized through its member-based neighborhood association by the City of Tampa. “Old Seminole Heights” is a name devised by residents in conjunction with recognition by the City of Tampa, and later, the Florida Department of Transportation and National Register of Historic Places. It specifically connotes the people in the neighborhood in the minds of others. One board member, Ms. DiBona, described it: Old Seminole Heights is about who we are as a community, a group of like-minded people who established a “club” to protect, preserve and promote a way of life which we felt was significant. This feeling was begun by a small group of friends and neighbors who lived within the compact original boundaries. As the group grew in numbers, people who lived in the outlying areas, 0210. See also WIPO/D2001-0059; WIPO/D2000-1764. Accord Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188, 1193 C.A.11 (Fla.), 2001. OSHNA UDRP COMPLAINT - 3 - wanted to be identified with Old Seminole Heights, as they valued the long-established sense of community existing here. It was an attitude of belonging and neighborly pride in what we had accomplished, not a legal description of our properties. Old Seminole Heights was our attempt to replicate the miniature township that this community enjoyed during our parents and grandparents generations. It is our inherited legacy. Clearly, the use of the designation that one is “from Old Seminole Heights” connotes more than identifying the parcel of land owned. It says, “I represent this group of folks with compatible values and beliefs who have come together to reach a common goal. I am designated (by virtue of my elected and appointed positions) to speak on behalf of these people, as long as I do so within the boundaries to which we have agreed”. It is a door-opener, as it is usually met with something like, “Oh, hi! You’re from Old Seminole Heights?” and then the conversation can continue. Mr. St. Ives described his experience: Seminole Heights is a geographic area. Old Seminole Heights is more; it’s a concept as well as a geographic area. What it represents to the people who live here and to the people of Tampa is a gracious way of living. A place where neighbors not only know neighbors but help neighbors, talk to neighbors, and really care. When you say Old Seminole Heights to another Civic Association they say ‘Wow, you’re the folks who did…’ and they name it off and add ‘..that benefitted X or that helped to complete Y. Some Civic groups will say … ‘You’re the folks who helped us get set up and running.’ If you say Old Seminole Heights to a political group such as City Council or the County Commission they will immediately recognize us as the group that spoke on such and such, or the group that opposed thus and so, or the folks who supported Z. Old Seminole Heights is known for not only developing concepts but for following through with their execution. The recognition of the community extends beyond Tampa Bay itself. The current issue of This Old House named Seminole Heights one of the “Best of the South,” making specific mention of its strong neighborhood organizations. Domain name dispute The dispute in this case arises from the manner in which the SHF leadership obtained the domain name. The following sequence of events is illuminating. The issue of 501c3 status has kicked around OSHNA for years. On August 28, 2008, OSHNA established a 501c3 committee charged with investigation of how best to proceed to create such a new entity, including specific discussion of what name and domain would be used. On September 16, 2008, Mr.