WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
International Organization for Standardization ISO v. Cameron Jackson
Case No. D2007-0700
1. The Parties
The Complainant is International Organization for Standardization ISO, Geneva, Switzerland.
The Respondent is Cameron Jackson, of Roseberry, New South Wales, Australia.
2. The Domain Names and Registrar
The disputed domain names <iso15022.biz>, <iso15022.info> and <iso15022.net> are registered with Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2007. On May 11, 2007, the Center transmitted by email to Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the domain names at issue. On May 11, 2007, Direct Information Pvt Ltd d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. 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 May 31, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was June 20, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 28, 2007.
The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on July 13, 2007. 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 the Rules, paragraph 7.
4. Factual Background
Established in 1947, Complainant is a non-profit, non-governmental organization. It is a worldwide federation of national standards bodies and has members in 158 countries.
The objective of ISO is to promote the development of standardization and related activities in the world, with a view to facilitating international exchange of goods and services and to developing cooperation in the spheres of intellectual, scientific, technological and economic activity. The results of ISO’s technical work are published as International Standards. The scope of ISO covers standardization in all fields except electrical and electronic engineering standards.
ISO standards contribute to making the development, manufacturing and supply of products and services more efficient, safer and cleaner and make trade between countries easier and fairer. ISO standards also serve to safeguard consumers, and users in general, of products and services. Standardization with regard to film speed codes, telephone and banking cards and international freight containers are a few examples of ISO standards that have been widely adopted.
Among many relevant ISO International Standards is ISO 3166 for country codes, which is the basis for the two-letter country designations (e.g., .ch, .fr., .uk, .us) in the Internet domain system (DNS). The ISO 9000 and ISO 14000 families are among ISO’s most widely-known standards. ISO 9000 and ISO 14000 standards are implemented by some 887,770 organizations in 161 countries. ISO 9000 has become an international reference for quality management requirements in business-to-business dealings, and ISO 14000 is well on its way to achieving as much, if not more, in establishing organizations to meet their environmental challenges. ISO 15022 is a standard which sets the principles necessary to provide different communities of users with the tools to design message types to support their specific information flows. These tools consist of a set of syntax and message design rules, a dictionary of data fields and a catalogue for present and future messages built by the industry.
Complainant registered the trademark ISO nationally in Switzerland on March 25, 1953 (Registration No. 146257) and internationally on May 25, 1953 (Registration No. 169541). Since then, Complainant has registered the ISO trademark in most countries, including Australia. (Registration No. 620381, registered in 1994).
The Second WIPO Domain Name Report identifies the problem of unauthorized persons seeking to benefit from the reputation of intergovernmental organizations by using their names or acronyms on the Internet. Such unauthorized use may mislead the public and tarnish the reputation of intergovernmental organizations. As a non-profit international body, the Complainant is in an analogous position to intergovernmental organizations.
5. Parties’ Contentions
The Complainant contends that the Respondent’s domain names are confusingly similar to the ISO trademark, that the Respondent has no legitimate interest in the domain names and that Respondent has registered and used them in bad faith.
The Respondent did not reply to the Complainant’s contentions or submit any evidence to the Panel.
6. Discussion and Findings
In order to succeed on its claim, Complainant must demonstrate that all of the elements enumerated in Paragraph 4(a) of the Policy have been satisfied:
(i) the domain names in dispute are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests with respect to the domain names; and
(iii) the domain names have been registered and used in bad faith.
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.”
A. Identical or Confusingly Similar
The domain names at issue incorporate Complainant’s ISO trademark in its entirety.
The addition of the number 15022 of an International Standard only serves to reinforce the association with the ISO, as it is a reference to one of the ISO standards. Thus, the addition of the number 15022 is not sufficient to exclude confusing similarity with the ISO trademark because such additions create an overall impression of a website sponsored by or affiliated with Complainant.
The Panel finds that the first criterion is satisfied.
B. Rights or Legitimate Interests
Respondent has not filed any response in this proceeding.
Complainant has presented a prima facie case indicating that Respondent does not have any rights or legitimate interests in the domain names, which has not been rebutted by Respondent.
Complainant has not licensed the mark ISO to Respondent.
There is no evidence that Respondent had a history of using or preparing to use the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services.
There is no evidence that Respondent has been commonly known by the domain names.
The Respondent is not making a legitimate non-commercial or fair use of the domain names.
The domain names create the impression of an association with Complainant and misappropriate the reputation of the ISO mark for Respondent’s commercial advantage.
The Panel finds that the second criterion is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, providing that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or location of a product or service on Respondent’s website or location.
It should be noted that the circumstances of bad faith are not limited to the above.
Respondent registered the domain names long after Complainant registered the ISO mark. A simple search in the Australian trademark database at the website at “www.ipaustralia.gov” would have retrieved Complainant’s registered rights to the mark ISO in Australia.
Complainant became aware of Respondent’s domain names on May 4, 2007. By email dated May 8, 2007, Complainant attempted to contact Respondent to inform it of Complainant’s trademark rights. That same day, Respondent replied to Complainant with two emails. In the first, Respondent stated its intention to transfer the domain names to Complainant “for a fee.” When Complainant asked the amount of the “fee”, Respondent replied:
$2,200 Australian dollars .
The fee to take this to WIPO is $1,500 US Dollars
I await your response
Respondent’s offer to sell the domain name to Complainant for more than his out of pocket costs and for a sum similar to the cost of this proceeding suggests that Respondent has no legitimate interest beyond the pure monetary gain from the sale of the domain names.
In two previous UDRP decisions (NAF0509000566966 <magicjohnson.info> and WIPO Case No. D2005-0909 <pfizeraustralia.info>), Respondent’s registration of the domain names at issue was held to be cybersquatting. Respondent’s conduct constitutes a pattern of preventing trademark owners from reflecting their mark in a corresponding domain name.
Accordingly, the Panel finds that Respondent has registered and used the domain name in bad faith in accordance with paragraphs 4(b)(ii) and (iv) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <iso15022.biz>, <iso15022.info> and <iso15022.net> be transferred to the Complainant.
Lynda J. Zadra-Symes
Dated: July 30, 2007