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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
International Organization for Standardization v. International Supplier Operations Audit Services
Case No. D2002-0460
1. The Parties
The Complainant is International Organization for Standardization, 1 Rue Varembé, CH-1211 Genève, Switzerland.
Represented by Steptoe & Johnson, Clements House, 14-18 Gresham Street, London EC2V 7JE, United Kingdom.
The Respondent is International Supplier Operations Audit Services, 007, Koonawarra Street, Victoria 3168, Australia.
2. The Domain Names and Registrar
The Domain Names are <isoquality.com>, <isoaudit.com>, <isoconsultant.net>.
The Registrar is eNom, Inc.
3. Procedural History
The Complaint was received by WIPO Arbitration and Mediation Center ("the Center") on May 14, 2002. The Center has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
The Complaint was properly notified in accordance with the Rules, paragraph 2(a). eNom, Inc. ("the Registrar") has confirmed that the domain names <isoquality.com>, <isoaudit.com and> <isoconsultant.net> ("the Domain Names") were registered through the Registrar and that International Supplier Operations Audit Services ("the Respondent") is the current registrant. The Registrar has further confirmed that the Policy is applicable to the Domain Names.
On May 17, 2000, the Center notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to the Center was June 11, 2002.
The Response was received by the Center by email on June 6, 2002. The Center issued a Response Deficiency Notification on June 7, 2002 and on June 8, 2002, the Center received the Amended Response.
On June 14, 2002 The Complainant submitted a reply to the Respondent’s Response and requested permission for that reply to be admitted into this administrative procedure. On June 16, 2002 the Respondent sent the Center an email commenting on the reply, but requesting leave to submit ‘an official reply’.
The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
The Panel acceded to the Complainant’s request in relation to its reply to the Response and granted the Respondent until June 25, 2002 to comment on the said reply. The Respondent did not submit any further comments, but the Panel has decided to admit the ‘unofficial’ reply, namely the Respondent’s email dated June 16, 2002.
No further submissions were received by the Center.
4. Factual Background
The Complainant is the International Organisation for Standardisation which is a non-governmental organisation based in Geneva, Switzerland. The Complainant comprises a federation of national standards bodies covering 142 countries including, by way of example, ANSI from the United States, SAI from Australia and DSM from Malaysia.
The Complaint sets out in detail the work of the Complainant. The Complainant’s objectives being "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 developing cooperation in the spheres of intellectual, scientific, technological and economic activity."
The Complainant’s work on the development of international standards is carried out through 2,885 technical bodies. According to the Complainant, more than 30,000 experts from all parts of the world participate each year in the Complainant’s technical work which, to date, has resulted in the publication of more than 13,500 ISO standards.
The Complainant is the registered proprietor of a number of trade mark registrations comprising or including the acronym ISO. One such registration is International Registration Number 430072 dated March 25, 1977, for ISO (word) in Class 16 for printed and other publications.
International Supplier Operations Audit Services ("the Respondent") claims to be a non-profit organisation based in Penang, Malaysia. While the WHOIS details indicate an address in Australia, the Respondent gives as its contact details the address 3-11-12, Desa Bistari 2, Lintang Pantai Jerjak, Penang 11700, Malaysia with a fax number in the United States, namely 1 810 821 5318 and an email address <email@example.com>.
From the WHOIS details exhibited to the Complaint it appears that the Domain Names were registered as follows:
- <isoconsulatant.net> June 5, 2001
- <isoquality.com> June 24, 2001
- <isoaudit.com> January 30, 2002
In the Response, the Respondent describes itself as "a non-profit quality professional matching service and on-line free resources to close digital gap for quality and audit service in Asia Pacific"(sic).
As at May 1, 2002, all three Domain Names pointed to the same website at <www.isoquality.com>.
The website includes, amongst others, the following passages of text:
"These below services only offer to companies located in the Asia Pacific region, i.e. China mainland and South East Asia.
North America, Europe and companies from other continentals are welcomed to hire us for on-site supplier audits, product quality inspections, etc. on your Asian suppliers.
Provides ISO Quality Audit and Consultancy for ISO 9001/14001 Programs…"
"ISOQuality .com is a quality consortium for freelance and contract quality professionals headquartered in Penang (a.k.a. Silicon Island) Malaysia."
"The first mission of ISO Quality dotCom is to provide a practical guide and knowledge resource center in ISO/QS9000, TQM, ISO14001, 6 Sigma, GMP, SPC etc. for quality practitioners who are interested in consulting services. Visit our Q-Library for free resources.
The second mission is to provide a free forum and exchange center for quality professionals who are seeking SOHO career path. Bi or multi-lingual skill besides the English language is an asset for you to handle customers in the Asia Pacific region.
The third mission is to provide a cost effective job matching service for independent quality professionals and the companies."
Free download ISO9001: 2000 Standards Manual (PDF 59kb) posted on Jan 2002…………
7. ISO9000 explained by Dr S. Thomas Foster (PDF 255kb) posted on 2 Feb 2002.
5. Review on changes in ISO9001: 200Vs ISO9000: 1994 (PDF 30kb).
4. ISO9001: 2000 Assessment Checklist (PDF 79kb) posted in 10 August 2001.
3. ISO9001: 2000 Gap Analysis (PDF 29kb) posted on 10 August 2001.
2. Overview of ISO9001: 2000 Quality Management 2000 – Detailed Guide for New ISO9001: 2000 with gap analysis checklists included. (PDF 333kb) posted on 9 August 2001.
1. Transition Planning for ISO9001: 2000 posted on 2 August 2001."
As is apparent from the above extracts, there are liberal references throughout the website to the term ISO and, in each case, the reference is clearly to the Complainant’s standards, except when the term is used as part of the name ISO Quality.com which is at the head of every page of the website and also when the term is used as part of the copyright notice at the foot of each page of the website in the form "isoquality.com © all rights reserved 2002".
On April 18, 2002 Mr Evgueni Patrikaav, director of the ISO/IEC Information Center sent an email to the Respondent at the email addresses, <firstname.lastname@example.org>, the email address appearing on the WHOIS search, email@example.com, the address on the website to which the Domain Names are connected and <firstname.lastname@example.org>. The email drew the addressees’ attention to the Complainant’s concerns. The letter invited the addressees "to withdraw the short name "ISO" from the names of your company and website, and from your internet Domain Name. If this is not done or we do not hear from you by 28 April 2002, ISO will take whatever actions it considers necessary to prevent the misuse of the ISO name."
The reply from <email@example.com> was gratuitously and vulgarly offensive and the Panel ignores it on the basis that the Respondent disclaims responsibility for anything not emanating from the email address appearing on the WHOIS.
On April 23 2002 the Complainant received identical responses from hello.com [firstname.lastname@example.org] and International Supplier Operations [email@example.com]. The text of those responses was as follows:
"Hello, I am legal representative for International Supplier Operations (ISO) Audit Services. All our domains are not sales to anyone except for our legal use.
We have done trademark check at US trademark office before we registered these domains from ICANN or its registrars based in California or US. Your client is not a said trademark holder or whatsoever claim he have made.
You are welcome to bring it to UDRP or court with proper jurisdiction to addess your concerns.
Sorry, we have strict policy of no opening any attachment. We cannot reply any concerns in your attachment.
PLEASE DO NOT SPAM OUR CONSULTANTS AT OTHER EMAILS. This firstname.lastname@example.org is only LEGITIMITE email to reply you.
For ISO Audit Services".
On April 23, 2002, the Complainant’s representative responded to the above by email in the following terms:
I have copied below the text of the letter which was in the attachment to my email message of yesterday…
"Dear Sir or Madam,
I refer to the recent exchange of e-mails between you and Mr Evgueni Patrikeev, Director of the ISO/IEC Information Centre, on 18-19 April, 2002. It is clear from your e-mail replies that you do not intend to comply with the requests of the International Organization for Standardization (ISO) to cease your use of the domain names "isoaudit.com", "isoquality.com" and "isoconsultant.net". As Mr Patrikeev has previously indicated, we believe that your use of these domain names infringes upon ISO’s trademark rights and is to be considered abusive registration under the criteria established in the Uniform Domain Name Dispute Resolution Policy (UDRP), which applies to your domain name through your registration agreement.
In this respect, I would like to inform you that my firm, Steptoe & Johnson, has been instructed by our client, ISO, as a first step, to submit a UDRP complain tot eh World International Property Organization’s Arbitration and Mediation Center (WIPO), in accordance with the UDRP, unless we receive your agreement by April 26, 2002, to withdraw your use of these domain names.
ISO also reserves its rights to claim reimbursement of any costs involved for administrative and legal procedures relating to this matter.
On April 23, 2002, hello.com replied:
OK. Let’s settle this dispute as per UDRP. You can submit it now rather than on 26 April 2002. We will ask for legal fee recourse depending on the outcome of UDRP."
5. Parties’ Contentions
The Complainant contends that the Domain Names are confusingly similar to the Complainant’s ISO trade mark.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Names. In support of that contention it claims that the Complainant has never licensed or otherwise authorised the Respondent to use its trade mark and the Respondent has not registered any mark comprising or incorporating the letters ISO. Moreover, the Respondent has not made any legitimate non-commercial or fair use of the Domain Names. Accordingly to the Complainant, ISO is not a name that would normally be used or has any bearing on the Respondent’s activities unless they are seeking to create an impression of association with the Complainant. The Complainant claims that all of the Respondent’s actions with respect to the Domain Names indicate that the Respondent registered the domains solely for the purpose of misappropriating the Complainant’s goodwill in its trade marks for the Respondent’s own commercial gain.
The Complainant further contends that the Respondent registered the Domain Names in bad faith and is using them in bad faith.
In support of that contention, the Complainant claims that the Respondent has no affiliation to the Complainant and that to the best of the Complainant’s knowledge the Respondent is operating under the name of <isoquality.com>. The Complainant points to the website described above and concludes that the assertions contained on the website "indicate the Respondent’s attempt to create an association with the Complainant or suggest that its products are endorsed by the Complainant."
The Complainant claims that it is clear from the references to the Complainant on the Respondent’s website that the Respondent registered the Domain Names with knowledge of the Complainant’s reputation and function. The Complainant contends that the use of the words "quality", "audit" and "consultant" in conjunction with the ISO name strongly indicates that the Respondent was aware of the Complainant, its mark and function at the time of registration and that the Respondent was attempting to trade off the name and reputation of the Complainant.
The Complainant draws attention to its extensive and continuous use of the ISO trade mark since 1970. The Complainant argues that "the Respondent in this case has no basis for the use of the Domain Names in dispute other than to attempt to attract internet users, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation and endorsement of Respondent’s products. As noted above, and to the best of the Complainant’s knowledge, the Respondent has taken continuous and active steps to increase the likelihood of confusion by the use of the infringing Domain Names and placing references to ISO on its website."
Finally, the Complainant argues that the Respondent’s attempt to mislead the public and divert certain of internet traffic of the Complainant’s website to its site, with its infringing use of the domain names that are misleading and similar to the ISO trade mark, is further illustrated by the fact that performing a keyword search of the term "ISO Quality" on a google website leads to a prominent reference to the respondent’s website.
The Respondent denies that the Complainant has any US registration of its trade mark and observes that its searches indicate that the Complainant has no trade mark registration in Malaysia.
The Respondent claims that ISO for the Respondent is an acronym of "International Supplier Operations".
The Respondent denies that the Domain Names are confusingly similar. In support it claims that the Complainant has no trade mark rights or patent for ISO, ISO Quality, ISO Audit and ISO Consultant in the United States of America where the Registrar and ICANN are located or in Malaysia where the Domain Owner is located. The Respondent goes on to claim that neither of those countries (the USA and Malaysia) are using ISO9000 or ISO14000 standards. It also states that the free matching service provided by the Registrant is totally different from the standardization research conducted by the Complainant. The Respondent argues that therefore no confusion will arise between the activities of the two organizations.
The Respondent denies that it has no rights or legitimate interests in respect of the Domain Names. In support, it states that it is a common practice for an organization to shorten its name or use an acronym for registering a domain name. The Respondent says that <isoaudit.com> is a perfectly correct choice of domain name for a company or organization with a name of "International Supplier Operations Audit Services". It also states that the activities indicated are in line with the name of the Respondent’s organization. It states "although the Registrant has no trade mark rights for ISO Quality or ISO etc. in Malaysia or other countries, this is because its principal activities are non-profit or non-commercial in nature." The Respondent further states that it has absolute legal rights to use the Domain Names because to do so involves no violations of any trade mark laws in Malaysia or in the United States.
The Respondent denies that the Domain Names were registered in bad faith and are being used in bad faith. The Respondent refers to what appears to be the results of a search it has conducted at the United States Patent and Trade Mark Office showing that South Bay Medical Inc. is the Applicant for Trade Mark Number 78025046 for ISO. It states that from its research it could find no trace of any United States Trade Mark in the name of the Complainant. It points too to its researches in Malaysia which came up with the same negative result so far as the Complainant is concerned.
The Respondent goes on to say that the Domain Names are mainly used for a non-profit quality professional matching service and quality free reference center. The Respondent claims that it does not gain any commercial benefit from its usage of the Domain Names. It criticises the Complainant’s arguments in relation to the search engines stating "its illogical to link search engine ranking with trade mark violations or bad faith in registering the Domain Names. The Respondent has NO control on how the search engines indexing (sic) the site".
The Respondent refers to various WIPO decisions cited in the Complaint and disputes their relevance. Finally the Respondent criticizes the Complainant for its email communications with addressees other than <email@example.com>, saying that sending emails to other addresses were intended to gain the sympathy of the Panel or to misguide the Panel.
C. The Further Submissions of the Parties
The Panel is unimpressed with the further submissions, which add nothing of substance to the debate.
The further submission from the Complainant reiterates many of the points made in the Complaint. It takes issue with the Response over the Respondent’s negative view of the Complainant’s trade mark position in the USA, citing a device mark registration.
The Respondent’s email alleges that the WHOIS information exhibited to the Complaint was false or inaccurate in that it was out of date, it seeks to make a point out of the fact that the Complainant’s trade mark is in upper case whereas the Domain Names are in lower case and it refers to other unparticularised defects in the Complainant’s further submission, which it would wish to rebut, if given the opportunity of doing so
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Names; and
(iii) The Domain Names have been registered in bad faith and are being used in bad faith.
Identical or confusingly similar
For the purposes of paragraph 4(a)(i) of the Policy the Complainant has to have rights in a trade mark or service mark and the Domain Names must be identical or confusingly similar to that trade mark or service mark. It is of no consequence in which jurisdiction those trade mark and service mark rights reside. They may be anywhere in the world. Additionally, those rights may be registered or unregistered.
Accordingly, the fact (if it be a fact) that, as the Respondent asserts, the Complainant has no relevant trade mark or service mark registrations in the United States and Malaysia is immaterial.
The trade mark/service mark which the Complainant puts forward is ISO. The international registration for that mark (details of which are given in the Factual Background above) is sufficient for the Complainant’s purposes. Even if it were not, the Respondent’s frequent use of the mark on the Respondent’s website to refer to the Complainant’s standards is testament to the fame of the Complainant’s products/services. The Panel finds that the Complainant has substantial unregistered rights in addition to its registered rights in the trade mark/service mark ISO.
The Domain Names are not identical to the mark ISO. Are they or any of them confusingly similar to ISO? The Domain Names all comprise the mark ISO followed by a generic noun (‘audit’, ‘quality’, ‘consultant’) and the generic domain suffix. For this purpose the domain suffix may be ignored.
In each case what is the effect of the addition of the noun? Does it or does it not serve to distinguish each Domain Name from the Complainant’s trade mark/service mark?
In the view of the Panel, each of those nouns in combination with the Complainant’s mark ISO is capable of being seen as and is likely to be seen as a reference to the Complainant (as opposed to an independent entity or service) by a not insignificant number of people.
ISO Quality is descriptive of the Complainant’s benchmark ISO Audit can be seen as being descriptive of what the Complainant undertakes as part of its research and ISO Consultants is descriptive of the person who undertakes the work of the Complainant.
The Panel finds that all of the Domain Names are confusingly similar to a trade mark or service mark in which the Complainant has rights.
Respondent’s Rights or Legitimate Interests
The Respondent’s sole justification for the adoption of the Domain Names is that the ISO prefix is an acronym of the first part of its name International Supplier Operations Audit Services.
If the Panel had been satisfied that the acronym had been selected without reference to the Complainant’s mark and was being used in a field of activity unconnected with that of the Complainant, this argument of the Respondent could have been persuasive.
However, 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.
Moreover, the acronym is only a partial acronym. If the Respondent had wanted to use its full acronym it would have been ISOAS. The shortened form was obviously felt to be more appropriate simply because it represented the Complainant’s mark. The parties in their contentions debate the issue as to whether or not the Respondent’s use of the Domain Names is a non-commercial or fair use within the meaning of paragraph 4(c)(iii) of the Policy. The Panel finds that the Respondent’s use of an incomplete acronym to identify its business under the (a) ISO Quality.com name, (b) its trading name and (c) on all pages of the website to which all the Domain Names are connected, is not a fair use of the Complainant’s mark. Nor is it a fair use of the Domain Names, which, as the Panel has already found, are likely to be taken by a substantial number of people as names of the Complainant.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
The Panel finds that the Respondent deliberately and unjustifiably selected the Domain Names with a view to associating itself and/or its services with the Complainant and in the hope that it would attract internet users to its website for commercial gain, those internet users believing that they would be visiting a site of the Complainant.
The fact that some of the Respondent’s services may be free does not obscure the fact that the Respondent is manifestly "in business", the website talks of cost effective services and the confusion which will be resulting from the use of the Domain Names will be giving the Respondent business opportunities that it would not otherwise have achieved.
The Panel finds that the Domain Names were registered in bad faith and are being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) of the Policy.
In light of the foregoing findings, the Panel orders that the Domain Names <isoquality.com>, <isoaudit.com> and <isoconsultant.net> be transferred to the Complainant.
Dated July 9, 2002