WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
International Organization for Standardization v. James Holroyd of Eon Solutions Ltd, a.k.a. NA and I see O
Case No. D2003-0739
1. The Parties
The Complainant is the International Organization for Standardization, Geneva, Switzerland, represented by Mr. Evgueni Patrikeev, Switzerland.
The Respondent is James Holroyd of Eon Solutions Ltd, a.k.a. NA and I see O of Chesire and Nantwich, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Names and Registrar
The disputed domain names <iso-audit.com>, <iso-compliance.com>, and <iso-standard.com> are registered with Tucows, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 19, 2003. On September 22, 2003, the Center transmitted by email a request for registrar verification to Tucows, Inc. in connection with the domain names at issue. On September 22, 2003, Tucows, Inc. transmitted by email its verification response to the Center, indicating that I See O is listed as the registrant for the domain name <iso-audit.com> and that NA is listed as the registrant for the domain name <iso-compliance.com> and <iso-standard.com> providing no address information, but providing one single email address (email@example.com) as administrative and technical contact for all disputed domain names.
The Complainant filed an amendment to the Complaint on September 24, 2003. The Center verified that the Complaint, together with the amendment to 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 September 25, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was October 15, 2003. The Respondent did not submit a Response before that date. Accordingly, the Center notified the Respondentís default on October 16, 2003.
The Center appointed Madeleine De Cock Buning as the sole panelist in this matter on October 27, 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 the Rules, paragraph 7.
On October 28, 2003, the Respondent filed a late Response to the Complaint.
In accordance with the Rules, paragraph 5(e), and in the absence of exceptional circumstances, the Panel will disregard this Response and shall decide the dispute based upon the Complaint.
4. Factual Background
The following is derived from the Complaint, the amendment to the Complaint and the supporting evidence submitted by the Complainant.
Complainant is a non-profit, non-governmental organization compromising a worldwide federation of national standards bodies. The activities of Complainant are to promote the development of standardization and related activities. Complainant has used significant resources to develop and maintain the ISO mark, which is recognized for integrity and neutrality. Complainant has registered the mark ISO in various countries, including the United States of America and Switzerland, some registrations dating back as far as 1971. The ISO mark is used in connection with communications and publications made available worldwide by Complainant.
The disputed domain names were registered on respectively March 17, 2000, <iso-audit.com>, March 20, 2000 <iso-compliance.com> and March 24, 2000, <iso-standard.com>.
The disputed domain name <iso-audit.com> is connected to a web site that offers goods and services for auditing and checking ISO 9001:2000 Compliance. The disputed domain names <iso-compliance> and <iso-standard> presently do not resolve in active web sites, but were used to offer compliance and audit software.
5. Partiesí Contentions
The Complainant contends as follows:
(i) The Complainant is the owner of the ISO mark. The disputed domain names are confusingly similar to the Complainantís mark because their use mislead third parties into believing that Respondent represents ISO, has been approved or authorized to act on behalf of ISO, or is otherwise associated with the effect to bring across the nature of the Complainantís business.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant has not licensed or otherwise authorized the Respondent to use its ISO mark.
(iii) The Respondent registered and is using the disputed domain names in bad faith essentially because:
a. Respondent registered the domain names with knowledge of the Complainant's mark, its function and reputation;
b. Respondent is misusing the ISO mark, attempting to create an association with ISO or suggesting that its products are endorsed by the Complainant.
The Respondent did not submit a Response to the Complainantís contentions before the Response due date of October 15, 2003.
6. Discussion and Findings
The Respondent was given notice of this proceeding in accordance with the Rules. The Center discharged its responsibility under Rules paragraph 2(a) to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint.
However, as previously indicated, the Respondent failed to file a timely reply to the Complaint. The Panel finds that the Respondent has been given a fair opportunity to present its case, and the Panel will proceed to a decision on the Complaint.
The Respondentís default does not automatically result in a decision in favor of the Complainant. The Complainant must still prove the elements required by Policy paragraph 4(a). In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements are satisfied:
1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.A);
2. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section 6.B); and
3. The domain name has been registered and is being used in bad faith (see below, section 6.C).
Pursuant to paragraph 15(a) of the Rules, the Panel shall decide on the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, the Panel may draw such inferences as it considers appropriate from the Respondentís failure to reply to the Complainantís assertions and evidence. In the circumstances, the Panelís decision is based upon the Complainantís assertions and evidence.
A. Identical or Confusingly Similar
The disputed domain names are <iso-audit.com>, <iso-compliance.com> and <iso-standard.com>.
The Complainant has provided sufficient evidence of its rights in the ISO mark, registered both nationally and internationally and especially well known in the circle of businesses in the standardisation industry.
The Policy requires that the disputed domain names be "identical or confusingly similar" to the Complainantís ISO mark. Since the domain names are not identical to the mark ISO, it is upon the Panel to decide whether they are confusingly similar.
The Respondentís domain names incorporate the Complainantís entire ISO mark with the mere addition of the nouns "audit", "compliance" and "standard".
The addition of these nouns does not serve to distinguish each domain name from the Complainantís mark. Each of these nouns in combination with the Complainantís mark ISO is likely to be seen as a reference to the Complainant, as opposed to an independent entity or service. In this combination the well known mark ISO is the distinctive element, therefore creating a likelihood of confusion as to the origin of the domain names and to possible affiliations between Respondent and Complainant.
In the circumstances, the Panel finds that the disputed domain names are confusingly similar to the Complainantís ISO mark. Accordingly, the Panel finds that the Complainant has satisfied the first element required by the Policy.
B. Rights or Legitimate Interests
According to Policy paragraph 4(c), the following circumstances, if proved, demonstrate a registrantís rights or legitimate interests in a domain name:
(i) the registrant used or demonstrably prepared to use the domain name or a corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute;
(ii) the registrant (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or
(iii) the registrant is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainantís mark.
There is no apparent legitimate justification for the Respondentís registration and use of the disputed domain names that are confusingly similar to the Complainant's mark:
(1) 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 names or a name corresponding to the domain names in connection with a bona fide offering of goods or services and the Complainant has not licensed its mark ISO to the Respondent;
(2) In respect of paragraph 4(c)(ii), there is no evidence that the Respondent has been commonly known by the domain names;
(3) In respect of paragraph 4(c)(iii), the Respondent is not making a legitimate non-commercial or fair use of the domain names.
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
Policy paragraph 4(a)(iii) requires the Complainant to prove that the Respondent registered and has used the disputed domain names in bad faith. Policy paragraph 4(b) provides that the following circumstances are deemed to be evidence that a registrant has registered and used a domain name in bad faith:
(i) circumstances indicating that the registrant has registered or has 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 its documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant 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, provided that the registrant has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation or endorsement of its web site or location or of a product or service on its web site or location.
The Complainant inter alia relies on Policy paragraph 4(b)(iv).
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 web site and business by the Complainant in an attempt to attract Internet users to its web site for commercial gain, based upon the following circumstances:
(1) the ISO name and mark are well known internationally and in particular amongst businesses in the standardisation industry. The Respondent must have been aware of Complainant's name and mark as it refers on its web site connected to the domain name <iso-audit.com> to Complainantís standards. The Panel infers from this, that the Respondent was aware of the Complainantís mark at the time of registration of the disputed domain names;
(2) the Respondent has not denied any knowledge of the Complainant or its mark;
(3) the Respondent has failed to provide an explanation why it registered the disputed domain names incorporating the Complainantís ISO mark;
(4) there is no apparent connection or relationship between the disputed domain names and the Respondent or its web site or its content; and
(5) there is no other apparent legitimate justification for the Respondentís registration and use of the disputed domain names for its web site.
Acting in good faith the Respondent could have chosen a domain name from a range of non-infringing alternative terms related to the standards industry, instead of incorporating, as it has done, the Complainantís mark in the disputed domain names (see International Organization for Standardization, ISO v. Glenn Kohner, Creative Intelligence Consulting and ISO-Online, WIPO Case No. D2003-0565 and World Wrestling Federation Entertainment, Inc. v. Aaron Rift, WIPO Case No. D2000-1499).
Accordingly, the Panel finds that the Complainant has established that the Respondent registered and is using the disputed domain names in bad faith pursuant to Policy paragraph 4(b)(iv).
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, <iso-audit.com>, <iso-compliance.com> and <iso-standard.com> be transferred to the Complainant.
Madeleine De Cock Buning
Dated: November 10, 2003