national arbitration forum




Missoula Federal Credit Union v. BWI Domain Manager c/o Domain Manager

Claim Number: FA0806001202940



Complainant is Missoula Federal Credit Union (“Complainant”), represented by Shane A. Vannatta, of WORDEN THANE P.C., Montana, USA.  Respondent is BWI Domain Manager c/o Domain Manager (“Respondent”), Cayman Islands.



The domain name at issue is <>, registered with Corp.



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.



           James A. Crary as Panelist.



Complainant submitted a Complaint to the National Arbitration Forum electronically on June 6, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 9, 2008.


On June 11, 2008, Corp. confirmed by e-mail to the National Arbitration Forum that the <> domain name is registered with Corp. and that Respondent is the current registrant of the name. Corp. has verified that Respondent is bound by the Corp. 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 June 17, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 7, 2008
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 by e-mail.


Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.


On July 14, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A Crary as Panelist.


Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.



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



A.  Complainant makes the following assertions:


1.      Respondent’s <> domain name is confusingly similar to Complainant’s MISS WEB WWW.MISSOULAFCU.ORG mark.


2.      Respondent does not have any rights or legitimate interests in the <> domain name.


3.      Respondent registered and used the <> domain name in bad faith.


B.  Respondent failed to submit a Response in this proceeding.



Complainant, Missoula Federal Credit Union, is a federally-chartered credit union located in Missoula, Montana.  Complainant advertises its banking services through its website resolving from the <> domain name.  Complainant’s website also serves as a portal to serve its customers.  Complainant has used the MISS WEB WWW.MISSOULAFCU.ORG mark since January 2, 2000 and held a registration of this mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,449,173 issued May 8, 2007); however, according to the registration information provided by Complainant, this mark was cancelled under Section 8 of the Trademark Act on February 16, 2008.


Respondent registered the <> domain name on July 27, 2004.  The disputed domain name resolves to a website that contains various links to third-party websites, some of which are direct competition with Complainant, as well as to Complainant’s website.



Paragraph 15(a) of 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."


In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).


Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)   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 has not established rights in the MISS WEB WWW.MISSOULAFCU.ORG mark for the purposes of Policy ¶ 4(a)(i).  The mark was cancelled under Section 8 of the Trademark Act on February 16, 2008.  See Game X Change, Inc. v. Modern Empire Internet Ltd., FA 1155839 (Nat. Arb. Forum, May 6, 2008) (finding that where the complainant’s first trademark had lapsed, the complainant had no rights in its previously registered mark).  However, Complainant need not hold a trademark registration to establish rights.  Complainant may establish common law rights in the mark through secondary meaning.  See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”); see also McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name complaint under the Policy). Complainant merely states that it has used the cancelled MISS WEB WWW.MISSOULAFCU.ORG mark since January 2, 2000.  This statement alone does not present sufficient evidence to establish common law rights through secondary meaning under Policy ¶ 4(a)(i).  See Weatherford Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum May 19, 2003) (“Although Complainant asserts common law rights in the WELLSERV mark, it failed to submit any evidence indicating extensive use or that its claimed mark has achieved secondary source identity . . . [Complainant’s claim that it is well known] is a finding that must be supported by evidence and not self-serving assertions.”); see also Molecular Nutrition, Inc. v. Network News & Publ’ns, FA 156715 (Nat. Arb. Forum June 24, 2003) (finding that the complainant failed to establish common law rights in its mark because mere assertions of such rights are insufficient without accompanying evidence to demonstrate that the public identifies the complainant’s mark exclusively or primarily with the complainant’s products). 


Therefore, the Panel finds that Policy ¶ 4(a)(i) has not been satisfied.


Rights or Legitimate Interests and Registration and Use in Bad Faith


Because Complainant has not satisfied Policy ¶ 4(a)(i), discussion of Policy ¶¶ 4(a)(ii) and (iii) is not necessary.



Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.


Accordingly, it is Ordered that the <> domain name REMAIN with Respondent.




James A Crary, Panelist

Dated:  July 28, 2008



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