WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

International Organization for Standardization v Root Research, Inc.

Case No. D2001-1194

 

1. The Parties

1.1 The Complainant is the International Organization for Standardization (the "ISO"), a non-governmental organization whose principal office is in Geneva, Switzerland.

1.2 The Respondent is Root Research, Inc., which has a postal address in Muttontown, New York, United States of America. The administrative and billing contact for the domain names registered by the respondent is Carl Schwartz.

 

2. The Domain Names and Registrar

2.1 Three domain names are at issue. They are as follows:

<iso-qa.com>
<isostandards.org>
<isostandards.net>

2.2 The Registrar of the domain names is Network Solutions, Inc. ("NSI"), of Herndon, Virginia, U.S.A.

 

3. Procedural History

Issuance of Complaint

3.1 On October 2, 2001, the ISO submitted a complaint to the World Intellectual Property Organization Arbitration and Mediation Center ("the WIPO Center") pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), both of which were approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999.

3.2 An Acknowledgement of Receipt of Complaint was sent to the Complainant on October 2, 2001.

3.3 On October 3, 2001, a Request for Registrar Verification was sent to NSI, requesting it to:

(i) Confirm that a copy of the Complaint had been received;

(ii) Confirm that the specified domain names had been registered with NSI;

(iii) Confirm that the respondent was the current registrant of the domain names;

(iv) Provide the full contact details available in NSIís WHOIS database for the domain name registrant, technical contact, administrative contact, and billing contact;

(v) Confirm that the Uniform Domain Name Dispute Resolution Policy applies to the domain names; and

(vi) Indicate the current status of the domain names.

3.4 On October 4, 2001, NSI confirmed that the three domain names at issue were registered with NSI and the current registrant was Root Research, Inc. The postal and electronic addresses and telephone and facsimile numbers were provided for the technical, administrative and billing contacts.

Notification of Complaint and Commencement of Proceedings

3.5 The complaint was deemed to comply fully with the formal requirements of the Policy and Rules. On October 9, 2001, a Notification of Complaint and Commencement of Administrative Proceeding was issued. The Notification required the Respondent to submit a response within twenty days, that is, by October 29, 2001.

Notification of Respondent Default

3.6 The Respondent failed to submit a response within the twenty-day period. On October 30, 2001, the WIPO Center issued to the Respondent a Notification of Respondent Default.

Appointment of Administrative Panel

3.7 On November 7, 2001, the WIPO Center received the Statement of Acceptance and Declaration of Impartiality and Independence of David A. R. Williams Q.C. On November 14, 2001, a Notification of Appointment of Administrative Panel and Projected Decision Date was issued, formally appointing David A. R. Williams Q.C. as Sole Panelist. Absent exceptional circumstances, the Administrative Panel was required to forward its decision to the WIPO Center by November 28, 2001.

 

4. Factual Background

4.1 The Complainant is a non-profit, non-governmental organization. It is a worldwide federation of national standards bodies and has 140 member countries.

4.2 The object of the Complainant is to promote the development of standardization in order to facilitate the international exchange of goods and services. Its technical experts have published more than 13,000 ISO standards.

4.3 ISO standards assessments add value to businesses. The standards safeguard consumers and make international trade easier.

4.4 The Complainant has invested in developing the ISO mark, which is a registered trademark in most countries. It is highly regarded and carries with it a reputation for integrity.

4.5 The Second WIPO Domain Name Report identifies the problem of unauthorized persons seeking to benefit from the reputation of intergovernmental organisations by using their names or acronyms on the Internet. By so doing, they may mislead the public and tarnish the reputation of intergovernmental organizations. The Complainant, as a non-profit international body, may be said to be in a similar position to intergovernmental organizations.

4.6 The Respondent, which trades as Schwartz Chemical Co, Inc., registered the three domain names at issue with NCI. The domain names resolve to Schwartz Chemicalís website, which promotes such products as adhesives and dyes.

 

5. The Partiesí Contentions

5.1 The Complainant argues that the Respondentís domain names are confusingly similar to the ISO trademark, and that the Respondent has no legitimate interest in the domain names and registered and is using them in bad faith.

5.2 The Complainant requests that the disputed domain names be transferred to the Complainant.

5.3 The Respondent has not replied to communications from the WIPO Center. It has not contested the Complainantís allegations or submitted evidence to the Panel.

 

6. Discussion and Findings

6.1 NSI uses the Uniform Domain Name Dispute Resolution Policy. Schedule A to NSIís service agreement states:

"If you registered a domain name through us, you agree to be bound by our current domain name dispute policy that is incorporated herein and made a part of this Agreement by reference."

6.2 The approach to be taken in deciding the outcome of this proceeding is contained in paragraph 15(a) of the Rules:

"A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable".

6.3 The Panel has not received any statements or documents from the Respondent since the formal commencement of proceedings on November 14, 2001. The Respondent is in default pursuant to paragraph 5(a) of the Rules. The Panelís power to decide the dispute notwithstanding the Respondentís default is given by paragraph 5(e):

"If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint".

No exceptional circumstances have been brought to the attention of the Panel.

6.4 The Policy sets out the terms and conditions which bind the registrant upon registration of a domain name. Paragraph 4(a) provides that the registrant must submit to a mandatory administrative proceeding in the event that a third party (a complainant) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:

(i) The registrantís domain name is identical or confusingly similar to a trademark in which the complainant has rights;

(ii) The registrant has no rights or legitimate interests in respect of the domain name; and

(iii) The registrantís domain name has been registered and is being used in bad faith.

In the event of a proceeding, the Complainant must prove that each element is present.

Confusingly Similar

6.5 In two of the domain names at issue, <isostandards.org> and <isostandards.net>, the Respondent uses "ISO" in conjunction with the word "standards". This evokes the nature of the Complainantís business. The third domain name, <iso-qa.com>, links "ISO" and "qa", which represents the "quality assurance" testing which is closely associated with the Complainantís standards compliance assessments. The combination of "ISO", an internationally recognised trademark, and "standards" or "qa" makes the domain names confusingly similar to the ISO trademark.

6.6 The websites to which the domain names resolve contain references to "ISO standards compliance". This adds to the impression that the site has some association with the ISO.

6.7 This conclusion is supported by previous decisions. In The Professional Golfersí Association of America v Domainanalyst.Com (Case No. D2000-1469), the Respondent had registered domain names which combined the Professional Golfersí Associationís widely recognised acronym, PGA, with words such as "open". The association between "PGA" and the word "open" was held to make the domain name confusingly similar to the PGAís trademark. The association between the ISO and standards or quality assurance has the same effect. In a further case, General Electric Company v Stephen Harper (Case No. D2000-1497), the inclusion of the acronym "GE" in domain names led to confusing similarity between the domain names and General Electricís trademark.

6.8 It is the opinion of the Panel that the three domain names registered by the Respondent are confusingly similar to the Complainantís trademarks.

Rights or Legitimate Interests

6.9 The Complainant has not licensed the acronym "ISO" to the Respondent.

6.10 In respect of paragraph 4(c)(i), there is no evidence that the Respondent had a history of using or preparing to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.

6.11 In respect of paragraph 4(c)(ii), there is no evidence that the respondent has been commonly known by the domain name.

6.12 In respect of paragraph 4(c)(iii), the Respondent is not making a legitimate non-commercial or fair use of the domain names. The Respondent is using the domain names to sell its products. The domain names create the impression of an association with the ISO and misappropriate the reputation of the ISO mark for the Respondentís commercial advantage.

6.13 It is the opinion of the Panel that the Respondent does not have a legitimate interest pursuant to paragraph 4(c) of the Policy.

Registering and Using a Domain Name in Bad Faith

6.14 Paragraph 4(b) of the Policy sets out four circumstances which, if present, will support a finding of registration and use of a domain name in bad faith. The Complainant need prove only one. The Complainant argues that the Respondent has violated paragraphs 4(b)(ii), (iii) and (iv). Its strongest argument is under paragraph 4(b)(iv), which states:

"By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."

6.15 The references to the Complainant on the Respondentís website, such as "ISO Standards Compliance", indicate that the Respondent knew of the Complainantís reputation and function at the time it registered the domain names.

6.16 The Respondent has no links to the Complainant. In the light of the Complainantís reputation, it would appear that the Respondent, trading as Schwartz Chemical Co, Inc., is attempting to suggest that its products have been endorsed by the ISO.

6.17 The Respondent has no reason to use the domain names other than to attract Internet users by suggesting that the Complainant is associated with the Respondent or has endorsed the Respondentís products. This is an attempt to misappropriate the Complainantís reputation for commercial gain.

6.18 This conclusion is supported by the decision in The Professional Golfersí Association of America v Domainanalyst.Com (Case No. D2000-1469), which on similar facts concluded that:

"There can be no other reasonable interpretation of the Respondentís activities than a primary intention to divert Internet users to sites having the disputed PGA Domain Names through confusion with the genuine PGA of America for purposes of commercial gain".

6.19 It is also supported by the decision in World Wrestling Federation Entertainment, Inc. v Aaron Rift (Case No. D2000-1499). In that case, the Panel found that the Respondent, rather than choosing an apt non-infringing alternative, had deliberately chosen the Complainantís mark as a "salient part" of the domain name knowing that it was a reference to the Complainant. This led to the conclusion that:

"[The] Respondent registered and used the domain name as an intentional attempt to attract Internet users to his website for commercial gain based on a likelihood of confusion with [the] Complainant."

6.20 The Panel concludes that the Complainant has proved that the Respondent was acting in bad faith pursuant to paragraph 4(b)(iv) of the Policy. There may also be bad faith pursuant to paragraphs 4(b)(ii) and (iii) of the Policy.

 

7. Decision

7.1 The evidence presented by the Complainant, which the Respondent has not contested, proves that, pursuant to paragraph 4(a) of the Policy:

(i) The domain names are confusingly similar to the trademark of the Complainant;

(ii) The Respondent has no rights or legitimate interests in respect of the domain names; and

(iii) The domain names have been registered and are being used in bad faith.

7.2 Therefore, the panel orders and directs that the registration of the domain names <iso-qa.com>, <isostandards.org> and <isostandards.net> be transferred to the Complainant.

 


 

David A.R. Williams, Q.C.
Sole Panelist

Dated: November 22, 2001