WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
International Organization for Standardization, ISO v. Glenn Kohner, Creative Intelligence Consulting and ISO-Online
Case No. D2003-0565
1. The Parties
The Complainant is International Organization for Standardization, ISO, Geneva, Switzerland, represented by Steptoe & Johnson LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Glenn Kohner, Creative Intelligence Consulting and ISO-Online, San Francisco, California, United States of America.
2. The Domain Names and Registrar
The disputed domain names <iso-online.com>, <iso14.com>, <iso17.com>, <iso9.com>, <isoninethousand.com>, <isowizard.com> are ("disputed domain names") registered with Network Solutions, Inc. Registrar.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 18, 2003. On July 21, 2003, the Center transmitted by email to Network Solutions, Inc. Registrar a request for registrar verification in connection with the domain name(s) at issue. On July 28, 2003, Network Solutions, Inc. Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 29, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was August 18, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on August 19, 2003. The Respondent notified the Center of its intention to request suspension of the proceedings and settlement of the matter from the Complainant on August 19, 2003. The Complainant declined the Respondentís request on August 22, 2003, as the Respondent had ignored its previous invitation to settlement discussions.
The Center appointed Alistair Payne as the Sole Panelist in this matter on August 26, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
4. Factual Background
The Complainant is a non-profit, non-governmental organisation comprising of a worldwide federation of national standards bodies. It has members in 146 countries.
The object of the Complainant is to promote the development of standardisation and related activities in the world with a view to facilitating international exchange of goods and services, and to develop cooperation in the spheres of intellectual, scientific, technological and economic activity. Its technical experts have published more than 13,000 ISO standards. The standards safeguard consumers and make international trade easier.
The Complainant has used significant resources to develop and maintain the ISO mark which is a highly recognised worldwide trademark representing an organisation with a reputation for integrity and neutrality. The Complainant uses the mark ISO to represent itself in all languages and ISO is a registered trademark in a number of countries, including the United States, Canada and Australia. In the 1990s, the ISO name gained increasing recognition due to the worldwide popularity of first, the ISO 9000 series and more recently the ISO 14000 series.
The Respondent, who appears to be operating under the name Vintara, has registered the disputed domain names.
5. Partiesí Contentions
1. Identical or Confusingly Similar
The Complainant contends that its trademark ISO has acquired worldwide fame and that the disputed domain names are confusingly similar to the Complainantís ISO trademark and well known acronym as it incorporates the Complainantís distinctive ISO mark. The number suffixes "9," "14" and "17" are abbreviations of ISO certification standards and the words "online" and "wizard" are generic terms for internet space and are descriptive of the Complainantís business. As such the suffixes do not differentiate the disputed domain names from the Complainantís ISO trademark.
The Complainant also shares the concerns expressed in the Second WIPO Domain Name Report which identified the problem of unauthorised persons seeking to benefit from the reputation of intergovernmental organisations by using their names or acronyms on the Internet. By doing so, they may mislead the public and tarnish the reputation of intergovernmental organisations. The Complainant refers to a recent decision decided in its favour where the UDRP panel decided the Complainant was in a similar position to intergovernmental organisations (see International Organization for Standardisation (ISO) v. Root Research, Inc WIPO, Case No. D2001-1194).
2. Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names for the following reasons:
• The Complainant has not licensed to the Respondent use of its trademark ISO.
• The Respondent has not made any legitimate non-commercial or fair use of the disputed domain names.
• ISO is not a name that would normally be used or which has any bearing on the Respondentís activities, unless the Respondent is seeking to create an impression of association with the Complainant.
3. Registration and use in bad faith
The Complainant contends that the fourth element of the policy in respect to registration and use in bad faith is satisfied as the Respondent has intentionally attempted to attract for commercial gain, internet users to its website by creating a false impression that it is associated with the Complainant.
The Respondent did not reply to the Complainantís contentions. Instead, the Respondent notified the Center its intention to request suspension of the proceedings and settlement of the matter from the Complainant on August 19, 2003.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this Administrative Proceeding and obtain the requested remedy (in this case transfer of the disputed domain names), the Complainant must prove that each of the three following elements are present:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
This element of the Policy requires the Complainant to prove that (a) it has rights in a trademark or service mark, and (b) the disputed domain name is identical to or confusingly similar to such trademark or service mark.
It is clear from the evidence submitted by the Complainant in its Complaint (in particular Exhibit I) that it has rights to the trademark ISO.
Although not identical, the disputed domain names are confusingly similar to the Complainantís mark. The disputed domain names incorporate the Complainantís mark in its entirety at the beginning of each domain name. In respect of the domain name <iso-online.com> the addition of the generic and descriptive word "online" does not distinguish that domain name from the Complainantís trademark. The word online is a generic term used in relation to the Internet space. (see Laure Pester (Lorie) and Sony Music Entertainment France SA v. Movie Name, WIPO Case No. D2003-0312 where the Panel referred to a series of cases which found that the word "online" grants no distinguishing attributes to the relevant domain name. In that particular case, the Panel found that the word "online" is trivial and generic).
The other disputed domain names, have the additional suffixes "9," "14," "17," "wizard" and "ninethousand." These suffixes do not remove the scope for confusion with the Complainantís ISO mark as the suffixes "9," "14," "17" and "ninethousand" are abbreviations of the Complainantís certification standards and when used as suffixes, evoke the nature of the Complainantís business.
For these reasons, the Panel finds that the Complainant has established this element of the Policy.
B. Rights or Legitimate Interests
In accordance with paragraph 4(c) of the Policy, a Respondent may demonstrate its rights or legitimate interests to the disputed domain names by proving, on a non-exhaustive basis, any of the following circumstances:
(i) before any notice to the Respondent of the dispute, the Respondentís use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent (as an individual, business, or other organisation) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not replied to the Complainantís contentions and on the evidence there is nothing to suggest that any of the circumstances set out above apply in this case.
On the contrary, from the Complainantís evidence it appears that the Respondent has not registered any marks that incorporate the ISO mark and is not commonly known by the disputed domain names.
The Panel therefore finds that the Respondent does not have any rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances, without limitation, any of which if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
The Respondent has failed to provide an explanation as to why it registered the disputed domain names incorporating the Complainantís ISO mark and suffixed with either an abbreviation reflecting the Complainantís business or a generic word. From the evidence submitted by the Complainant in relation to its activities and trademarks (Exhibits G and I) it is clear that the ISO name and mark are well known internationally and in particular amongst businesses in the standardisation industry. The Panel infers from this, that the Respondent was aware of the Complainantís mark at the time of registration of the disputed domain names. The Respondent must have been aware of the mark as the services offered by the Respondent are expressly stated on the Respondentís websites as relating to the Complainantís ISO 9000, 14000, and 17799 standards (see Exhibit C).
Accordingly, the Panel finds that the Respondent registered and used the disputed domain names in bad faith by intentionally creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation or endorsement of its website and business by the Complainant in an attempt to attract internet users to its website for commercial gain. In World Wrestling Federation Entertainment Inc v. Aaron Rift (WIPO Case No. D2000-1499) the Panel found for the Complainant as the Respondent deliberately selected the complainantís mark as part of its domain name rather than choosing a non-infringing alternative. Similarly, acting in good faith the Respondent could have chosen a domain name from a range of non-infringing alternative terms relating to the standards industry, instead of incorporating as it has done the Complainantís trademark in the disputed domain names.
In addition, as the suffix of each disputed domain name is either a generic word or an abbreviation which reflects the Complainantís business, none of the Respondentís disputed domain names are sufficiently distinguished from the Complainantís trademark. Coupled with the reference in the Respondentís website to the Complainantís standards, there is a likelihood of confusion on the part of Internet users that the Respondent is sponsored, affiliated with or endorsed by the Complainant. In the absence of contrary evidence, the Panel finds that there can be no other reasonable interpretation of the Respondentís activities than of a primary intention to use the disputed domain names to divert internet users to the Respondentís websites (see PGA v. Domainanalyst.com et al, WIPO Case No. D2000-1469).
For these reasons, the Panel finds that the Respondent registered and used the disputed domain names in bad faith. As this element of the Policy is also established the Complainant succeeds in its Complaint.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names are transferred to the Complainant.
Dated: September 10, 2003