WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
International Organization for Standardization ISO v. Quality Practitioners Institute and Website Pros, Inc. and Quality
Case No. D2005-1028
1. The Parties
The Complainant is International Organization for Standardization ISO, Geneva, Switzerland, represented by its legal advisor, Switzerland.
The Respondents are Quality Practitioners Institute, Lincoln, Nebraska, United States of America and Website Pros, Inc. and Quality, Mount Juliet, Tennessee, United States of America.
2. The Domain Names and Registrar
The disputed domain names <isonet.net> and <isotraining.net> are registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by e-mail on September 30, 2005, and in hardcopy on October 4, 2005.
On October 3, 2005, the Center transmitted by email to Network Solutions, LLC (the “Registrar”) a request for registrar verification in connection with the domain names at issue.
On October 4, 2005, the Registrar transmitted by email to the Center its verification response in respect of both registrations.
In the case of the registration of <isonet.net>, the Registrar confirmed that the First Named Respondent is listed as the registrant and provided the contact details for the administrative, billing, and technical contact.
In the case of the registration of <isotraining.net>, the Registrar confirmed that the Second Named Respondent is listed as the registrant and provided 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 Respondents of the Complaint, and the proceedings commenced on October 7, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 27, 2005. The Respondents responded by email but failed to submit a Response in the proper form.
The Center appointed James Bridgeman as the sole panelist in this matter on November 4, 2005. 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
The Complainant is a non-profit, non-governmental organization that was established in 1947 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 the Complainant’s technical work are published as ISO International Standards and address standardisation in all fields except electrical and electronic engineering standards.
The Complainant is a worldwide federation of national standards bodies and has members in 153 countries. The Complainant’s work on the development of international standards is carried out through 2,952 technical bodies. More than 30,000 experts from all parts of the world participate each year in the technical work which, to date, has resulted in the publication of more than 15 000 ISO standards.
Some 570 international organizations have liaison status with the Complainant; this includes all UN specialized agencies working in similar fields. The Complainant has general consultative status with a number of bodies and agencies within the UN such as the Economic and Social Council (ECOSOC) and is a member of the World Economic Forum (WEF).
The Complainant registered the first ISO trademark nationally in Switzerland on March 25, 1953, (Registration No. 146257) and internationally on May 29, 1953, (Registration No. 169541).
Since then the Complainant has registered its ISO trademarks in many jurisdictions throughout the world, including three registrations in the United States of America where the Respondents reside. The earliest registration in the United States of America being US trademark registration number 0909170, first registered in 1971 and most recently renewed in 2001 in international class 16. The Complainant has submitted a list of its registrations of the ISO mark as an annex to the Complaint.
Since 1976 the Complainant has operated a network agreement called ISONET. ISONET is an agreement between standardizing bodies, encompassing 107 countries and important regional standardization bodies such as the African Regional Organization for Standardization (ARSO), the Arab Industrial Development and Mining Organization (AIDMO), the European Committee for Standardization (CEN), the International Trade Centre UNCTAD/WTO (ITC) and the Pan American Standards Commission (COPANT).
In recent years, the Central Secretariat of the Complainant has become aware that the short name “ISO” is being included in domain names by unauthorized parties.
In many cases, the Complainant has approached domain name registrants with the request to relinquish their domain names. Many registrants have complied with the Complainant’s requests. Others, however, have been the subject of UDRP proceedings. In order to warn potential infringers, the Complainant has published a policy statement on its website with regard to the use of the ISO name on the Internet: (http://www.iso.org/iso/en/xsite/namelogo.html).
In 2004 the Respondents made contact with the Complainant seeking certain information and as a consequence the Complainant became aware that the Respondents had registered and were using the domain name <isonet.net>.
In the months of June and July 2004 there was an exchange of email correspondence initially between the Respondents and the Complainant and subsequently between the Respondents and the legal representatives of the Complainant. Arising out of this correspondence the Complainant, through its legal representatives on July 12, 2005 offered an amicable settlement of the dispute on the following terms:
The Complainant required the Respondent to
“1. stop any use of the Domain Name <isonet.net> per (sic) January 1, 2006;
2. … guarantee that this deadline is respected and that [the] agreement is irrevocable, [the Respondent to] transfer the ownership of the domain name <“isonet.net>“ or other domains containing the word “ISO”, if any, to [the Complainant] within the next two months. [The Complainants to] then leave the connection of the domain to [the Respondent’s] server until January 1, 2006, so that [the Respondent would] be able to sue the domain name during this period.
3. [agree] in future to comply with ISO policy regarding the ISO name and logo which is published on ISO Online (http;//www.iso.org/iso/en/xsite/namelogo.html)”
In the event that the Respondent agreed to accept these requirement, the Complainant agreed to “waive the pursuit of any claims for damages of any nature, for the surrender of any lawful profits, or for the reimbursement of any legal costs it has incurred as a result of [the] Domain Name dispute”.
On the same day the Respondents sent an email stating: “That sounds great. Please understand that we were in no way knowingly doing anything illegal! We will transfer the domain name, once we figure out how the mechanics. (sic) We do have one other domain name with ISO in it <‘ISOTraining.net>“ that will also be transferred. …”
On the same day the legal representatives of the Complainant responded and inter alia offered to provide the Respondent with technical information from the Complainant.
As of the date of the filing of the Complaint the Respondent had not arranged for the transfer of either of the domain names.
In the email reply sent by the Respondent to the Center on receipt of the Complaint, the Respondent stated inter alia:
“Please be advised that we have stopped using ISO based domain names as of 2004, per our agreement. Since this time we have tried on numerous occasions to have that website pulled, to no avail. It appears that the hosting body that we contracted with has gone out of business. … QPI has tried to do what we can to have these domain names and subsequent websites pulled but have been unsuccessful. We have spent thousands of dollars to comply with your request. This has been done by redesigning our website, marketing literature, course materials changes etc. etc.”
5. Parties’ Contentions
The Complainant has brought one Complaint only in respect of two different domain names each registered in the name of a different registrant. The Complainant has submitted that the registrations of both of the domain names in dispute are owned by one and the same entity. In support of this submission it advances a number of reasons the most convincing being that the Respondent has acknowledged that this is the case in its email of July 12, 2004; the contact information obtained from the “contact us” sections in both websites the name of the company is Quality Practitioners, Inc and the email address is identical.
The Complainant requests the Administrative Panel appointed in this administrative proceeding to issue a decision that the contested domain names be transferred to the Complainant.
The Complainant submits that its Complaint is based on the Complainant’s rights in the ISO trademark, the Respondent’s lack of rights in the ISO mark and in the domain names <isonet.net> and <isotraining.net> and The respondent’s bad faith registration and use of the contested domain names <isonet.net> and <isotraining.net>.
The Complainant claims to have extensive rights in the ISO trademarks in the United States of America and worldwide and that it applies significant resources to develop and maintain the ISO mark.
The Complainant submits that the ISO mark has become a highly recognized worldwide trademark with a reputation for integrity and neutrality.
While the Complainant’s name is different in various languages througout the world, the Complainant consistently uses the mark “ISO” to represent itself in all languages. Because the name International Organization for Standards would have different acronyms when translated into other languages, for example OIN in French, it was decided to adapt a word derived from the Greek isos meaning “equal”.
The Complainant has cited a number of successful complaints that it has brought under the UDRP to protect its ISO trademarks.
Addressing its claim to rights in the ISO mark, the Complainant refers to the above referenced trademark and service mark registrations throughout the world. The Complainant further states that in the 1990’s, the ISO name gained increasing recognition due to the worldwide popularity of first, the ISO 9000 series of standards, later joined by the ISO 14000 series.
The ISO 3166 standard for country codes is the basis for the two-letter country designations (e.g., .ch, .fr, .uk, .us) in the Internet domain name system (DNS).
The policy of not allowing any company or organization except ISO members to use ISO trademarks has been pursued by ISO since its creation in 1947.
The Complainant claims that the disputed domain names are identical or confusingly similar to the registered trademarks “ISO” worldwide and particularly to US Trademark No. 0909170 ISO, registered in March 2, 1971.
The dominant and distinctive component of each of the disputed domain names is the letters “iso”, which is identical to Complainant’s registered trademark. In the domain names in dispute the additional elements being the words “net” and “training” respectively are insufficient to remove the likelihood of consumer deception.
The words “net” and “training” are generic references that do not convey any information that would indicate that the websites are owned by third parties unrelated to ISO. Many administrative panels have accepted that the addition of generic words to a mark in order to form a domain name is insufficient to dispel confusing similarity (cf. Viacom International, Inc. v. MTVMP3.COM, WIPO Case No. D2001-0275 <mtvmp3.com>, Minnesota Mining & Manufacturing v. JonLR, WIPO Case No. D2001-0428 <3mcare.com> and Bayerische Motoren Werke AG v. DLR, WIPO Case No. D2001-1231 <bmwbikes.com> et al.)
In WIPO Case No. D2003-0565 <iso-online.com> the administrative panel stated that “ [t]he disputed domain names incorporate the Complainant’s 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 Complainant’s trademark.”
With regard to the domain name <isonet.net> the Complainant has operated the abovementioned Isonet network since 1976.
With regard to the domain name <isotraining.net>, the Complainant submits that one of its core activities is to provide training to member bodies and organizations worldwide on standardization. Inevitably, the domain name <isotraining.net> would be taken by customers and consumers as belonging to the International Organization for Standardization.
Thus, each of the domain names engender an overall impression of being the address of a website sponsored by the Complainant.
As stated in numerous decisions, the gTLD extension “.net” is completely without legal significance for the purpose of comparing The complainant’s trademark with the challenged domain names since it is a technical requirement for a domain name to be functional (see PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696).
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the domain names. The Complainant accepts that it is required to make out an initial prima facie case that the Respondent lacks rights or legitimate interests (see Croatia Airlines d.d. v. Modern Empire Internet Ltd, WIPO Case No. D2003-0455 <croatiaairlines.com>, Transfer, and Belupo d.d. v. WACHEM d.o.o. WIPO Case No. D2004-0110 <belupo.com>).
Internet research undertaken by the Complainant, including trademark searches in the USPTO database and Madrid Express (WIPO), excludes any trademark rights by The Respondent in the domain names and suggests that the Respondent is not commonly known by either of them.
The Complainant submits that any awareness by the public of the Respondent based on the use of the domain names should not be relevant; otherwise, if all a respondent had to show was that some goodwill had been generated between the date of registration of the domain name and the commencement of proceedings, then the purpose of the Policy would be easily defeated.
From the information posted on the websites, The Respondent is clearly undertaking a commercial activity aimed at obtaining profit by providing diverse publications, training services and links to other sites with commercial products related to standards. A printout of the Respondent’s website submitted as an annex to the Complaint, includes a list of prices for some of the products and services provided by The Respondent.
The Respondent cannot be said to be making a “bona fide offering of goods or services prior to any notice of the dispute” since The Respondent knew at all times that ISO was a protected trademark. As stated in a number of WIPO UDRP precedents, a deliberately infringing use should not be considered bona fide use. To conclude otherwise would mean that a the Respondent could rely on intentional infringement to demonstrate a legitimate interest (Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847 and Lava Trademark Holding Company, LLC v. Creative Labs, Inc., WIPO Case No. D2001-0994).
None of the The Respondents is a licensee or otherwise associated to the Complainant. The Respondent has never been authorized, but on the contrary, was urged to discontinue use of its domain names on several occasions.
In International Organization for Standardization v. Root Research, Inc., WIPO Case No. D2001-1194, the domain names were being used by the Respondent to sell its products and services, and it was decided that the Respondent did not have a legitimate interest in the domain names in question as they create the impression of an association with the ISO and misappropriate the reputation of the ISO mark for the Respondent’s commercial advantage.
The Complainant states that according to the above arguments, the Respondents do not have any rights or legitimate interest in the disputed domain names.
Addressing the allegations of registration and use of the domain names in bad faith, the Complainant submits that it first informed the Respondent of its trademark rights in an email dated June 23, 2004. It is further agreed that despite great deal of understanding showed by the Complainant in the correspondence that followed, the Respondent never cooperated.
The Complainant’s representative sent a communication to The Respondent on July 12, 2004, informing him of ISO’s trademark rights and urging him to transfer the domain names (initially it was only the domain name <isonet.net> until The Respondent informed The complainant of the second domain name <isotraining.net>).
On that same day, The Respondent agreed to transfer the domain names to the Complainant.
Despite reminders sent to the Respondent, the domain names were never transferred.
The Complainant submits that in what it describes as “numerous WIPO precedents”, the Respondent’s agreements to transfer the domain names have provided a strong argument to award the complaint (see Guinness UDV North America v. Timothy Nicholas Llewellyn Lewis, WIPO Case No. D2001-0621, and Deutsche Bank AG v. Carl Seigler, WIPO Case No. D2000-0984).
Furthermore the Complainant submits that the Respondent registered the challenged domain names long after the complainant registered the ISO mark. A simple search in the USPTO trademark database would have retrieved the complainant’s registered marks in the United States. The Respondent had therefore constructive notice of The complainant’s registered trademark rights (see Nike, Inc. v. Azumano Travel WIPO Case No. D2000-1598).
Furthermore, as stated in International Organization for Standardization v. International Supplier Operations Audit Services, WIPO Case No. D2002-0460 <isoquality.com>- “the services offered by the Respondent are expressly stated on the Respondent’s website to relate to the Complainant’s ISO/QS9000, TQM, ISO14001 standards. As one would expect from someone engaged in the field of quality standards, the Respondent has at all material times been well aware of the Complainant’s mark.”
The Complainant submits that it is clear that the Respondent knew of the complainant and its activities when he registered the domain names.
The Complainant further claims that the Respondent’s conduct fit squarely within the bad faith activities contemplated in paragraph 4(b)(iv) of the Policy viz. that by using the domain names, the Respondent intentionally attempted to attract for commercial gain, Internet users to the 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location
The Respondent’s websites are related to activities for which The complainant is genuinely known.
The Respondent has intentionally chosen domain names that give the impression of affiliation between the Complainant and the Respondent so it could profit from the confusion of consumers that would end up in The Respondent’s websites and would order the Respondent’s products and/or services under the impression that they are actually ordering those products/services from the Complainant.
In accordance with the above arguments, the Complainant submits that the Respondent deliberately and unjustifiably selected the domain names with a view to create a likelihood of confusion with the Complainant and therefore registered and is using both of the domain names in issue in bad faith.
The Respondent’s unlawful conduct in complete disregard for The complainant’s rights fits squarely in the definition of cybersquatting - as an abusive registration of domain names and is causing irreparable injury to the goodwill and reputation of The complainant.
The Respondent did not file a formal Response but sent an email reply to the Center on receipt of the Complaint. The Respondent has denied that it registered the domain names in bad faith and has stated that it has ceased to use the domain name since the agreement with the Complainant in 2004 and that the websites “have not been updated, not been changed or even visited for may years…”
The Respondent further stated: ” Please be advised that we have stopped using ISO based domain names as of 2004, per our agreement. Since this time we have tried on numerous occasions to have that website pulled, to no avail. It appears that the hosting body that we contracted with has gone out of business…”
6. Discussion and Findings
Identity of Parties
This Administrative Panel has considered and accepted the submissions of the Complainant relating to the identity of the Respondents and has determined that on the balance of probabilities, the Respondents are either the same entity or are two or more entities acting in partnership and/or in concert and it is appropriate to deal with both Respondents in the same Administrative Proceedings.
Jurisdiction of the Administrative Panel
On the evidence submitted in the Complaint there was an agreement between the Parties on July 12, 2005, and the Respondent confirmed that agreement in the reply sent by the Respondent to the Center on receipt of the Complaint. The details of the agreement are recited above.
The UDRP has a very limited purpose and is not available for the resolution of contract disputes as such.
In these Administrative Proceedings the Complainant is not pursuing a breach of contract but has alleged in accordance with paragraph 4(a) of the Policy that:
(i) the domain names registered by the Respondents are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondents have no rights or legitimate interests in respect of the domain names in question; and
(iii) the domain names have been registered and are being used in bad faith.
On July 12, 2004, the Complainant agreed to waive the pursuit of any claims for damages of any nature, for the surrender of any lawful profits, or for the reimbursement of any legal costs it has incurred as a result of the “Domain Dispute”.
The Complainant did not agree to waive its rights to bring UDRP proceedings and in the circumstances this Panel is satisfied that the Complaint can be considered.
A. Identical or Confusingly Similar
The Complainant has satisfied this Panel that it has established rights in its name, trademark and service mark ISO in many jurisdictions throughout the world including the United States of America. These rights have been established both by registration and at common law through the extensive use of the mark and the reputation of the Complainant in its work establishing international standards.
The evidence is that the Complainant first registered the ISO trademark nationally in Switzerland on March 25, 1953 (Registration No. 146257) and internationally on May 29, 1953 (Registration No. 169541).
The Complainant first registered the ISO trademark in the United States of America in 1971 and that USA trademark registration number 0909170 was most recently renewed in 2001 in international class 16.
In addition since 1976 the Complainant has operated a network agreement between standardizing bodies called Isonet details of which are set out above.
The domain name <isonet.net> consists of the Complainant’s trademark ISO together with the letters “net” and the gTLD extension “.net”. In the context of an Internet domain name the letters “net” are either generic or descriptive. The word “net” implies the existence of a network – either the Internet itself or some other network.
Insofar as it refers to the Internet, the word “net” is generic as is the extension .net for the gTLD. In this context the domain name <isonet.net> is confusingly similar to the Complainant’s ISO trademark.
Insofar as it refers to some other network the domain name <isonet.net> is confusingly similar to the Complainants Isonet agreement between standardizing bodies that incorporates the Complainants name and mark.
Similarly the domain name <isotraining.net> consists of the Complainant’s distinctive name and mark together with the generic word training and thereby is confusingly similar to the Complainants ISO mark.
The Complainant has therefore established the first element of the test in respect of both registrations.
B. Rights or Legitimate Interests
The Respondent has claimed in its email correspondence with the Complainant on July 7, 2004, that it has established rights in the domain name through long established use. The email from the Respondent to the Complainant states:”… based on our legal counsil (sic) investigation, we are legally protected in using this domain name since we have been using it prior to your trademark and we are in NO WAY tring to deceive anyone that our organization is associated with yours.”
This seems to be an incorrect statement of the facts:
While there is no evidence of the date on which the Respondents first established websites at these addresses, the domain name registration record for <isonet.net> was created on July 17, 1997, and the record for the registration of the domain name <isotraining.net> was created on November 12, 2003.
The Complainant’s rights clearly pre-dated the registration of the domain names: the Complainants rights in its registered mark dates back to 1953 and in the United States of America, the Complainants ISO mark was first registered in 1971 and was most recently renewed in 2001 in international class 16.
On the other hand there is no evidence that the Respondent has any connection whatsoever with any mark or business undertaking or entity with a legitimate right to use the letters ISO in connection with standards and training. The domain names are clearly intended by the Respondent to refer to the Complainants ISO standards and as the Complainant has expressly prohibited any third party from use of the name and mark ISO in any domain name it follows that the Respondent has no rights or legitimate interest in the domain names.
B. Registered and Used in Bad Faith
The Complainant has submitted that the Respondents had constructive knowledge of the Complainants registered trademark rights and that this in itself is sufficient to satisfy the requirement of bad faith.
The Respondents claim to have had no knowledge of the Complainant’s trademarks when the domain names in issue were registered.
Be that as it may, it is clear that the Respondents were well aware of the Complainant’s reputation and goodwill and the documentation published by the Complainant. The Respondent clearly chose the domain names specifically to identify their services with the Complainant.
Such registration of the domain names are clearly the type of activity contemplated in paragraph 4 (b)(iv) of the Policy as being bad faith registration viz:
“by using the domain name(s), the Respondent intentionally attempted to attract for commercial gain, Internet users to the 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location”.
As to whether the domain names are being used in bad faith, in the replying email that the Respondent sent in lieu of a Response, the Respondent states that the domain names are no longer being used and that the websites established at these addresses have not been updated. This is clearly a self contradictory position to take.
On the date of this decision, this Administrative Panel has confirmed that both domain names are being used as the addresses for websites offering the services of Quality Practitioners Inc.
The Complainant has therefore succeeded in satisfying the third element of the test in paragraph 4 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, <isonet.net> and <isotraining.net> be transferred to the Complainant.
Date: November 20, 2005