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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Welltec ApS v. Dave Gardner

Case No. D2000-1145

 

1. The Parties

The Complainant is Welltec ApS, a public limited company in Denmark, Hejrevang 21, DK-3450 Allerod, Denmark. The Respondent is Dave Gardner, an individual resident at the address of Kannikgata 33, 4008 Stavanger, Norway.

 

2. The Domain Name and Registrar

The domain name at issue is "welltractor.com", which domain name is registered with Network Solutions, Inc. ("the Registrar"), Herndon, Virginia, United States of America.

 

3. Procedural History

A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on August 30, 2000, and in hardcopy on September 1, 2000.

On September 1, 2000, a Request for Registrar Verification was transmitted to the Registrar requesting it to:

(1) confirm that a copy of the Complaint was sent to the Registrar by the Complainant, as required by WIPO Supplemental Rules for Uniform Dispute Resolution Policy, Paragraph 4(b);

(2) confirm that the domain name at issue is registered with the Registrar;

(3) confirm that the Respondent is the current registrant of the domain name(s);

(4) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the Registrar’s WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact;

(5) confirm that the Uniform Domain Name Dispute Resolution Policy applies to the domain name(s);

(6) indicate the current status of the domain name(s).

On September 10, 2000, the Registrar confirmed that a copy of the Complaint was sent to the Registrar by the Complainant, the domain name "welltractor.com" was registered with the Registrar and that the Respondent was the current registrant of the name. The Registrar also forwarded the requested WHOIS details, confirmed that the Uniform Domain Name Dispute Resolution Policy was in effect and stated that the domain name was in "Active" status.

Effective January 1, 2000, the Registrar adopted the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, (the "Policy"). There is no evidence that the Respondent ever requested that the domain name at issue be deleted from the domain name database. Accordingly, the Respondent is bound by the provisions of the Policy.

The Panel has determined that the Complaint is in formal compliance with the requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999, (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999, (the "WIPO Supplemental Rules"). The required fees for a single-member Panel were paid on time and in the required amount.

No formal deficiencies having been recorded, on September 12, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, the Registrar and ICANN), setting a deadline of October 1, 2000, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by facsimile and by e-mail to the e-mail addresses indicated in the Complaint and specified in the Registrar’s WHOIS confirmation, as well as to

postmaster@welltractor.com

. In addition, the Complaint was sent by express courier.

On September 29, 2000, the Respondent submitted its Response to the WIPO Center. On October 16, 2000, the WIPO Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date. This Notification informed the parties that the Administrative Panel would be comprised of Mr. Jonas Gulliksson.

The Panel finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and WIPO Supplemental Rules.

The Administrative Panel shall issue its Decision based on the Complaint, the Response, the Policy, the Uniform Rules and the WIPO Supplemental Rules.

 

4. Factual Background

The Complainant and its Registered Trademarks

Welltec is an international company that develops and manufactures the Well Tractors® products for the oil and gas industry. The main product of Welltec, the Well Tractors®, has been the key factor to the success of the company.

Welltec has sales offices in Scotland and Norway, providing global customer support and operation management.

Welltec is the owner of the intellectual property associated with Well Tractors® technology. Well Tractors® is a registered trademark and the product is patented or patent is applied for by Welltec.

The trademark is registered as a Community Trademark, and is also registered in the USA and in Norway. Copies of the registration certificates are enclosed as Annex C to the Complaint.

Well Tractors® is a special tool that conveys intervention tools into horizontal and deviated wells. Well Tractors® can perforate, production log, run in open hole and also run on coiled tubing. Consequently the mark is registered for

Class 7: Fluid driven and electric conveyors for use in oil drilling and on oil wells for both land and off-shore applications.

Class 9: Fluid driven and electric measuring apparatus and measuring instruments to be used with fluid driven and electric conveyors in oil drilling and on oil wells for both land and off-shore applications.

Welltec is also the proprietor of the domain name welltec.dk.

Maritime Well Service AS, ("MWS") the Company where the Respondent is employed, is an upstream oil and gas service company supplying the following products and services, including but not limited to: well tractor, cased hole logging, well testing, fluid sampling, fluid analysis, memory pressure/temperature recorders, perforating, punching, plug setting, corrosion caliper, downhole video camera, wireline, coiled tubing, retrievable bridge plug, intervention free completion products, smart well technology, high temperature electronics.

Respondent is a provider of tractor services in the North Sea Market and Abu Dhabi.

 

5. Parties’ Contentions

A. Complainant

The Complaint is based on the following grounds:

After all applicable standards of trademark law the domain name welltractor.com must be considered confusingly similar to the trademark Well Tractors®. The only difference between the two signs is the letter "s".

The holder of the domain name is one of the chief executives in the division of the Norwegian company Aker Maritime called Maritime Well Service, in the following called MWS.

The Complainant has previously delivered a number of Well Tractors® devices to MWS, who used them to serve their customers in the Norwegian oil industry and elsewhere. A copy of MWSґ brochure is enclosed as Annex D. Of particular interest is that on the last page of the brochure MWS acknowledges that Well Tractors® is a registered trademark of Welltec, i.e. of the Complainant.

MWS suddenly broke of the cooperation between the two parties in 1998. In March 2000 MWS started to market a copy of the Well Tractors® called Power Trac. The two parties are presently engaged in a patent dispute in Norway regarding this question. The case is still pending and does not include the dispute over the domain name.

The Respondent has, as mentioned, a leading role in MWS. He has registered the domain name without the consent of the Complainant.

The web site under welltractor.com is used for advertising MWSґ own product Power Trac. A copy of MWSґ marketing material bearing the domain name is enclosed as Annex E to the Complaint.

Further a printout of the web site www.welltractor.com is enclosed as Annex F. As the printout shows, the site also contains a direct link to the main site of MWS. Further, the Respondent is using the word Well Tractor as a key word in the underlying HTML- code of the site - often referred to as a meta-tag. A copy of the HTML-code is enclosed as Annex G to the Complaint.

Under these circumstances there can be no doubt that the domain name is registered for the purpose of disrupting the business of the Complainant. Also by using the website as shown, the Respondent intentionally attempts to attract Internet users to the registrant’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, affiliation, or endorsement of the registrant’s web site or location or of a product or service on the registrant’s web site or location.

Finally, Complainant has requested the Administrative Panel to issue a decision by which the contested domain name "welltractor.com" is transferred to Complainant.

B. Respondent

In his response, the Respondent has stated the following:

MWS and Complainant entered into a co-operation agreement in 1994 in order to develop a well tractor. A copy of an official translation of the co-operation agreement is enclosed as Annex 2 to the Response.

In 1996, the development work was finished and the parties’ well tractor was introduced to the market. However, in 1998 Welltec broke the co-operation. Currently, there is an ongoing dispute regarding the contractual relationship between the parties, in which MWS disputes the lawfulness of Welltec’s breach of co-operation.

It is not correct that there is a patent dispute between the parties. The fact is that Welltec has not obtained any patent for its well tractor, save one patent regarding a part of a small engine, which is a small and insignificant part of the well tractor. The correct description of the dispute is that Welltec has argued that MWS’s marketing and sale of well tractors represents a breach of the Norwegian Marketing Control Act.

Nevertheless, this is not the controversial point in the domain name dispute before the WIPO Panel. Thus the background is that the co-operation between the parties has ceased, and now both MWS and Complainant develop and manufacture their own well tractors.

Complainant has not met its burden of proof – Respondent has legitimate interests in respect of the domain name and the domain name is not registered or used in bad faith

Under the Policy, Paragraph 4(a), Complainant must establish that all of the following three conditions are satisfied:

that the domain name is identical or confusingly similar to a trademark in which Complainant has rights; and

that Respondent has no rights or legitimate interests in respect of the domain name; and

that the domain name has been registered and is being used in bad faith.

To succeed, Complainant must prove each of these three elements. Respondent hereby alleges that Complainant has not met its burden of proof. Neither requirement no. 2 nor no. 3 is fulfilled in this case. Respondent opposes the allegation that Respondent has no rights or legitimate interests in respect of the domain name and that the domain name has been registered and is being used in bad faith.

The domain name "welltractor.com" is a generic term

Respondent does not contest that the trademark and domain name is similar. However as the term " well tractor" is a generic word, Complainant must tolerate that other entities make use of the term. It is not confusing the relevant customers that the domain name and the trademark co-exist. The term is a descriptive word generally and widely used as the term for the product in this particular business sector.

MWS’s web pages (included in Annex 1 to the Response) show that the term "well tractor" is used as the generic word for the product. MWS would like to refer to its competitors, who also uses the term "well tractor" on their web pages as a descriptive word for the product in question. Furthermore, a simple word search on the Internet results in several pages with the descriptive terms "well tractor", "downhole tractor", "wireline tractor" and other similar terms.

Copies of some of the parties’ competitors’ web pages are submitted in Annex 3 to the Response. The documents included in Annex 3 to Response comprise:

1. Tractors developed by different companies (e.g. Sondex, Smartract, Read, Omega)

2. Parts for tractors (ref. the Weatherford company BEI)

3. Articles from publications

4. Business directory listings

5. News bulletin from Statoil

In addition there have been presented papers as well as the distribution of material from various companies on the subject of tractors.

This clearly shows that the term "well tractor" is widely used in this business sector and the oil and gas industry generally for the device.

The difference between a domain name and a trademark registration

The difference between domain name registration and trademark registration is that one may register descriptive and generic words as domain names, whereas a trademark is required to be fanciful, coined and original; thus a non-descriptive term. Should an entity obtain trademark registration for a descriptive word, this entity must tolerate that the trademark protection is weak.

As "well tractor" is the generic term for such devices, thus strictly spoken Complainant should not have obtained a trademark protection for such descriptive word. However, since Complainant has a descriptive word as its trademark, Complainant must tolerate that others make use of the word as well. This follows from generally accepted trademark law. One cannot by trademark registration obtain monopoly on the use of a descriptive term. Otherwise, this would undermine the whole concept of the first come first served principle in domain name registration.

Respondent has rights and legitimate interests in respect of the domain name and the domain name has been registered and is being used in good faith.

Complainant is alleging that Respondent has registered the domain name with the intention to attract Internet users to the web site, by creating a likelihood of confusion with the complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site.

Respondent alleges that this is not the case.

The domain name welltractor.com was registered simply because MWS produces and manufactures well tractors. The domain name is merely a generic term for MWS’s product, thus for obvious reasons Respondent chose to register the domain name. The domain is routed to MWS’s other domain name "mws.no". This is a common method used by several businesses with Internet presence to attract customers that "surf" the Internet and guess domain names in order to find the products and services they are looking for on the Internet. For the same reasons, the term "well tractor" is used as a meta tag in the html code, together with other descriptive words for MWS’s products and services, such as "downhole tractor" and "wireline tractor". We refer to the Complaint, Annex G to the Complaint.

In other words, Respondent’s use of the domain name is in connection with a bona fide offering of goods or services.

Complainant cannot claim any rights to a generic domain name just because they produce well tractors as well. A recognized principle for domain name registration is the "first come, first served" principle. For example, of two shoe manufacturers, the shoe manufacturer that first registers the domain name "shoe.com" will obtain the right to hold this domain name. Consequently, Complainant cannot claim the right to the domain name welltractor.com just because it has managed to register the term as a trademark.

With respect to domain names, we have noted that Welltec has bought the domain name "well-tractor.com". However as far as we can see from our Internet search they are not using the domain name. A copy of the whois search result for the domain name is enclosed in Annex 4 to the Response.

It cannot have been the policy makers’ intention that the Policy should be used by trademark holders to "steal" domain names from businesses/competitors in the same business that haven’t protected their product (i.e a descriptive term for their product) as a trademark, and that has registered the descriptive term for their product as domain name in good faith and with the intention to use it as an Internet address for their business.

We refer to the Final Report of the WIPO Internet Domain Name Process of April 30, 1999 (available online at

http://wipo2.wipo.int/process1/report/doc/report.doc)

. The Final Report recommends that "the scope of the administrative procedure be limited to cases of bad faith, abusive registration of domain names that violate trademark rights ("cybersquatting," in popular terminology)". A copy of the relevant page is submitted in Annex 5 to the Response.

On this background, it is clear that the Policy is intended for use on disputes between well-known or famous trademarks and domain name hijackers. In this case however, both parties produce and manufacture well tractors; thus both parties have a legitimate interest in the domain name. Hence the first come, first served principle must prevail.

 

6. Discussion and Findings

According to Paragraph 15(a) of the Rules the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,

2) that the Respondent has no legitimate interests in respects of the domain name; and

3) that the domain name has been registered and is being used in bad faith.

The domain name welltractor.com is identical with the trademark WELL TRACTORS except for the letter "s ". Therefore, the Panel finds that the domain name must be considered confusingly similar to the trademark.

Although Complainantґs trademark rights in WELL TRACTORS long predate this dispute, Respondent argues that Complainant lack rights in the mark because it is generic.

The Respondent’s allegation that the words "well tractor" constitutes a generic name cannot be taken into account in this Administrative Proceeding for the following reasons. The trademark WELL TRACTORS is a registered trademark in Norway and in an English speaking region and country namely the European Community and the US. In the trademark laws of this region and country, trademarks are examined with respect to distinctiveness and there are absolute grounds for refusal of generic words. The US-Registration contains a disclaimer but only for the word "well" itself. Consequently, these trademark registrations constitute prima facie evidence of distinctiveness. In order for genericness to be taken into account in an Administrative Proceeding it would be necessary to present convincing evidence showing that the words "well tractors" were obviously generic at the time of the registration or that they have thereafter become generic through degeneration. Such evidence has not been presented by the Respondent and can only in obvious cases be considered prejudicially in a written administrative procedure. However, this decision should not be interpreted as a final decision stating that Complainantґs mark is generic or not.

The prerequisite in the Policy, Paragraph 4 (a) (i) is therefore fulfilled.

Paragraph 4(a)(ii) of the Policy further provides that the Respondent shall have no rights or legitimate interest in respect of the domain name.

The Respondent has stated that the domain name welltractor.com was registered simply because MWS produces and manufactures well tractors which is a generic term. Further, the Respondent has stated that the domain is routed to MWS’s other domain name "mws.no" which is a common method used by several businesses with Internet presence to attract customers that "surf" the Internet and guess domain names in order to find the products and services they are looking for on the Internet. Due to these circumstances Respondent states that the use of the domain name is in connection with a bona fide offering of goods or services.

Since the parties have co-operated in the past and the fact that MWS has in its brochure, Annex D to the Complaint, acknowledged that WELL TRACTORS is a registered trademark of the Complainant, the Panel finds that the Respondentґs use of the domain name is not in connection with a bona fide offering of goods or services.

The prerequisite in the Policy, Paragraph 4(a)(ii) is therefore fulfilled.

Paragraph 4(a)(iii) of the Policy further provides registration and use in bad faith.

Paragraph 4(b) provides which kind of evidence is required.

With regard to the fact that the parties have co-operated in the past, that MWS has in its brochure, Annex D to the Complaint, acknowledged that WELL TRACTORS is a registered trademark by Complainant and that MWS has on the website

www.welltractor.com

, Annex F to the Complaint, a direct link to the mainsite of MWS, the Panel finds that the Respondent has registered and used the domain name welltractor.com in bad faith.

Consequently, all the prerequisites for cancellation or transfer of the domain name according to Paragraph 4 (i) of the Rules are fulfilled.

The Complainant has requested the transfer of the domain name.

 

7. Decision

In view of the above circumstances and facts the Panel decides that the domain name registered by the Respondent is identical or confusingly similar to the trademarks in which the Complainant has rights, and that the Respondent has no rights or legitimate interests in respect of the domain name, and that the domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4 (i) of the Policy, the Panel requests that the registration of the domain name "welltractor.com" be transferred to the Complainant.

 

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Jonas Gulliksson
Sole Panelist

Dated: October 31, 2000