Weatherford International, Inc. v. Paul Wells
Claim Number: FA0304000153626
Complainant is
Weatherford International, Inc., Houston, TX (“Complainant”) represented
by Stewart Mesher, of Howrey Simon Arnold & White. Respondent
is Paul Wells, Lithia Springs, GA (“Respondent”).
REGISTRAR AND DISPUTED
DOMAIN NAME
The domain name at issue
is <wellserv.com>, registered with Network Solutions, Inc.
The undersigned
certifies that he has acted independently and impartially and to the best of
his knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf
(Ret.) as Panelist.
Complainant submitted a
Complaint to the National Arbitration Forum (the "Forum")
electronically on April 2, 2003; the Forum received a hard copy of the
Complaint on April 3, 2003.
On April 4, 2003, Network
Solutions, Inc. confirmed by e-mail to the Forum that the domain name <wellserv.com>
is registered with Network Solutions, Inc. and that Respondent is the current
registrant of the name. Network Solutions, Inc. has verified that Respondent is
bound by the Network Solutions, 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 April 7, 2003, a
Notification of Complaint and Commencement of Administrative Proceeding (the
"Commencement Notification"), setting a deadline of April 28, 2003 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@wellserv.com by e-mail.
Having received no
Response from Respondent, using the same contact details and methods as were
used for the Commencement Notification, the Forum transmitted to the parties a
Notification of Respondent Default.
On May 2, 2003, pursuant
to Complainant's request to have the dispute decided by a single-member Panel,
the Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.
Having reviewed the
communications records, the Administrative Panel (the "Panel") finds
that the 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 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 <wellserv.com>
domain name is identical to Complainant’s WELLSERV common law mark.
2. Respondent does not have
any rights or legitimate interests in the <wellserv.com> domain
name.
3. Respondent registered
and used the <wellserv.com> domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Weatherford
International, Inc., conducts business operations involving: “the oil and gas
well completion services, thru-tubing remedial services for the oil and gas
industry, oil and gas well treatment services, and supervising, inspecting an
operating oil and gas well equipment for others.”
Complainant’s exhibits
indicate that one of its affiliated companies is “WellServ Limited,” which has
purportedly used the WELLSERV trademark since 1988. Complainant contends that
it has prominently and extensively used, promoted and advertised its products
and related services under the WELLSERV mark.
Respondent, Paul Wells,
registered <wellserv.com> on May 12, 1995. Complainant’s
investigation of Respondent’s use of the domain name indicates that Respondent
has failed to use <wellserv.com> for any purpose, or in connection
with a 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.
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.
Complainant fails to
establish common law rights in the WELLSERV mark for the purposes of this
dispute under Policy ¶ 4(a)(i).
Under the Policy,
Complainant must fulfill its initial burden to prove by a preponderance of the
credible, relevant and admissible evidence, that the domain name is identical
or confusingly similar to a mark in which it has rights. See TotalFinaElf
E&P USA, Inc. v. Farnes, FA 117028 (Nat. Arb. Forum Sept. 16 2002)
(finding that in order to bring a claim under the Policy, Complainant must
first establish a prima facie case. Complainant’s initial burden is to
provide proof of “valid, subsisting rights in a mark that is similar or
identical to the domain name in question”); see also Do the Hustle v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that paragraph 4(a) of the
Policy sets out three elements implying that Complainant has the burden of
proof as to each of the three elements).
Although Complainant’s
assertion that it holds common law rights in the WELLSERV mark dating back to
1988 is uncontested by Respondent, Complainant fails to demonstrate with
sufficient evidence its rights to the Panel. See VeriSign Inc. v. VeneSign
C.A., D2000-0303 (WIPO June 28, 2000) (finding that Respondent’s default
does not automatically lead to a ruling for Complainant). Complainant neglected
to include any evidence indicating that its affiliate, WellServ Ltd., makes
sufficient use of the WELLSERV mark justifying transfer of the disputed domain
name. 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. More specifically, the Complaint
references Exhibit 2 when stating, “Weatherford has used the WELLSERV mark
since 1988, and has prominently and extensively used, promoted, and advertised
its mark.” However, Exhibit 2 is a letter sent from the Vice President of
Complainant’s Intervention Services division to Respondent, which includes
minimal references to the “WellServ Ltd.” corporate entity. Although
Complainant’s WELLSERV product and related services may be well-known among
relevant consumers, that is a finding that must be supported by evidence and
not self-serving assertions. Precedent does not support merely protecting
Complainant’s assertions in lieu of any supporting evidence, statements or
proof (e.g., business sales figures, revenues, advertising expenditures, number
of consumers served, trademark applications or intent-to-use applications).
Simply operating under a business name does not, per se, constitute
secondary source identification sufficient to warrant a finding of common law
rights in the WELLSERV mark. Complainant’s burden requires proffering
supportive evidence or information that indicates relevant consumers identify
its alleged WELLSERV mark as representative of its services and identity. See
Cyberimprints.com, Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11,
2001) (finding that Complainant failed to prove trademark rights at common law
because it did not prove the CYBERIMPRINTS.COM mark was used to identify the
source or sponsorship of goods or services or that there was strong customer
identification of the mark as indicating the source of such goods or services);
see generally Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug.
17, 2000) (finding common law rights in a mark where its use was continuous and
ongoing, and secondary meaning was established); see generally Nat’l Ass’n
of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003)
(finding that Complainant had provided evidence that it had valuable goodwill
in the <minorleaguebaseball.com> domain name, establishing common law
rights in the MINOR LEAGUE BASEBALL mark).
Additionally, numerous
decisions have determined that the relevant point in time when Complainant must
establish rights in its mark is before Respondent’s registration of the domain
name. See Transpark LLC v. Network Adm’r, FA 135602 (Nat. Arb. Forum
Jan. 21, 2003); see also DJR Holdings, LLC v. Paul Gordon a/k/a IQ Mgmt.
Corp., FA 141813 (Nat. Arb. Forum Mar. 4, 2003). Even if the Panel accepted
Complainant’s contention that it has common law rights in the WELLSERV mark as
true, such rights must be established prior to Respondent’s registration of the
disputed domain name. Although Complainant asserts that it has used the
WELLSERV mark since 1988, no external evidence corroborates this statement.
Because Respondent’s registration of the domain name occurred in May 1995,
Complainant’s prolonged use of the WELLSERV mark must be established in order
to support the ouster of Respondent.
Establishing common law
rights in a mark requires a showing by Complainant that its mark has acquired
secondary meaning. In other words, Complainant must establish that the public
associates the asserted mark with its goods and services. The Panel finds that
Complainant failed to meet this burden. Because Complainant must satisfy each
element listed under paragraph 4(a) in order to succeed in a dispute under the
Policy, it is not necessary to pursue further analysis under Policy ¶¶ 4(a)(ii)
or (iii). See FRH Freies
Rechenzerntrum v. Ingenieurburo FRH, FA 102945 (Nat. Arb. Forum Jan. 18,
2002) (determining that Complainant has not proven by a preponderance of the
relevant, admissible, and credible evidence that the domain name in question is
identical to a trademark in which Complainant has rights despite Complainant’s
mark being the dominant feature of Complainant’s trade name); see also
Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept.
20, 2002) (finding that because Complainant must prove all three elements under
the Policy, Complainant’s failure to prove one of the elements makes further
inquiry into the remaining element unnecessary).
This decision, however,
should not be construed as a finding that Complainant could never establish
that it has common law rights in the WELLSERV mark that predate Respondent’s
registration of the <wellserv.com> domain name. But in the absence
of sufficient rights on the record before it, the Panel holds that this issue
cannot be resolved in the context of this proceeding.
Having failed to
establish the requisite elements required under ICANN Policy, the Panel
concludes that relief shall be DENIED.
Accordingly, it is
Ordered that the Complaint be DISMISSED.
Honorable Paul A. Dorf
(Ret., Panelist
Dated: May 19, 2003
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