DECISION

Weatherford International, Inc. v. Paul Wells

Claim Number:  FA0304000153626

PARTIES

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.

PANEL

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.

PROCEDURAL HISTORY

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.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

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.

FINDINGS

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.

DISCUSSION

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.

Identical and/or Confusingly Similar

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.

DECISION

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