DECISION

Midwest America Federal Credit Union v. Startup Consultant

Claim Number: FA0408000309836

PARTIES

Complainant is Midwest America Federal Credit Union (“Complainant”), represented by Amy Heltzel, 1021 Swinney Avenue, Fort Wayne, IN 46802-4399.  Respondent is Startup Consultant (“Respondent”), 3775 W. Shadyside Rd., Angola, IN 46703.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <mwafcu.com>, registered with Tucows 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.

P. Jay Hines as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 6, 2004; the Forum received a hard copy of the Complaint on August 9, 2004.

On August 9, 2004, Tucows Inc. confirmed by e-mail to the Forum that the domain name <mwafcu.com> is registered with Tucows Inc. and that the Respondent is the current registrant of the name.  Tucows Inc. has verified that Respondent is bound by the Tucows 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 August 10, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 30, 2004 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@mwafcu.com by e-mail.

A timely Response was received and determined to be complete on September 8, 2004.

On September 13, 2004 Complainant filed a timely additional submission which has been considered by the Panelist. 

On September 14, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed P. Jay Hines as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant is the twelfth largest credit union in Indiana.  It is a federally insured non-profit financial service cooperative with 15 branches in four states.  It began operations in 1936 as General Electric Employees Federal Credit Union and changed its name in 1987 to Midwest America Federal Credit Union.  Complainant states that its web site is accessible at <mwafcu.org>, which represents the initials of the Complainant.

Complainant  was the original domain name holder for the subject domain, <mwafcu.com>.  It purchased the .org equivalent in 1998 and transferred the site at that time.  The owner of Respondent StartUp Consultant, David Johnson, is a former employee of Complainant.  He was hired in 1985 and resigned June 30, 1999 as the Manager of Information Systems.  Complainant alleges that it could not meet Mr. Johnson’s salary requests and as a result was injured with respect to Year 2000 preparations and compliance.  Complainant also alleges that Respondent offered to sell the subject domain, but a price was not discussed.

Complainant alleges that Respondent has no legitimate reason to own and use the domain name <mwafcu.com> in that the planned use initially included competing financial services designed to rely on misdirected traffic, as does the current affiliate marketing program appearing at the site.

B. Respondent

Respondent asserts that Complainant abandoned the subject domain name for an extensive period of time and that he purchased it on June 6, 2002 with the intention of starting a wireless device portal called “My Wireless Access For Communication Utilities.”  Respondent produced an “under construction” page and a developed home page pertaining to wireless services, neither of which have been fully developed.  Respondent admits that in 2003 he set up an investment site at the subject domain to assist in financing the wireless service.  The current use with respect to selling satellite TV services is again to assist with the startup costs for the original planned site.  Respondent asserts that Complainant failed to dispute his ownership and/or usage of the domain name for over two years. 

Respondent states that he never had any plans to sell the domain name to the Complainant or any other entity.  He considers Complainant’s statements in the complaint to be defamatory and alleges reverse domain name hijacking.

Respondent points out that Complainant does not own a registration for the mark MWAFCU or any variant.  Respondent alleges that Respondent does not use the acronym MWAFCU to identify or distinguish any product or service.

C. Additional Submissions

Complainant asserts that it has common law rights in the mark MWAFCU.COM “because the Internet is a major public relations and distribution channel for the Complainant and Complainant is commonly known as MWAFCU in the geographic regions it serves.”  In support of this claim, Complainant refers to Respondent’s e-mail of August 17, 2004 to the National Arbitration Forum and various employees and senior managers of Complainant in which Respondent refers to Complainant as MWAFCU.

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 is Midwest America Federal Credit Union and owns <mwafcu.org>.  However, Complainant has failed to allege and demonstrate its common law rights in a trademark or service mark corresponding to the letter string “MWAFCU.” 

Complainant need not own a registration, state or federal.  A common law mark certainly can exist and can justify imposition of the ICANN rules.  However, the Complainant should provide evidence of continuous and ongoing use for some period of time to establish secondary meaning.  See Digital Wedding Forum Int”l LLC v. Domain Reseller, FA 290945 (Nat. Arb. Forum Aug. 21, 2004); see also Tuxedos by Rose v. Nunez, FA 95248 (Nat.Arb.Forum Aug. 17, 2000); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001). 

Complainant’s reference to Respondent’s recent e-mail does not demonstrate that Complainant has been identified by the public as MWAFCU or that Complainant uses the mark MWAFCU in promotional or advertising materials.  Complainant relies on Vinidex Pty Limited v. Hubert Auinger, AF-0402 (eResolution October 18, 2000).  However, the decision did not rely on the common law use of the Vinidex name since there were registered marks.  There is insufficient evidence to establish secondary meaning.  See Cyberimprints.com, Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001). 

Although it is likely that Complainant can demonstrate either use of MWAFCU as a mark or strong customer identification of the designation as an indication of Complainant as a source of services, the ownership of the domain name <mwafcu.org> and the recent e-mail of Respondent do not establish that Complainant has “valid, subsisting rights in a mark that is similar or identical to the domain name in question.”  See TotalFinaElf E&P USA, Inc. v. Farnes, FA 117028 (Nat. Arb. Forum Sept. 16, 2002); see also Jobs4 Ltd. v. Seungpil Nam, FA 293540 (Nat. Arb. Forum Aug. 26, 2004). 

The Panelist finds that Policy Paragraph (a)(4)(i) has not been satisfied.  Accordingly, it is unnecessary to address the claims under the remaining two elements.  See Creative Curb v. EdgeTec Int’l Pty. Ltd. FA 116765 (Nat. Arb. Forum Sept. 20, 2002).

DECISION

Having failed to establish the first element under the ICANN policy, the Panel concludes that relief shall be DENIED.  This determination is without prejudice to Complainant’s refiling with the necessary proof. 

P. Jay Hines, Panelist
Dated: September 28, 2004

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