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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 Respondent’s 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 Respondent’s 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. Parties’ 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 Complainant’s ISO trademark and well known acronym as it incorporates the Complainant’s 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 Complainant’s business. As such the suffixes do not differentiate the disputed domain names from the Complainant’s 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 Respondent’s 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 Complainant’s 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 Complainant’s mark. The 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. 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 Complainant’s
ISO mark as the suffixes "9," "14," "17" and "ninethousand"
are abbreviations of the Complainant’s certification standards and when used
as suffixes, evoke the nature of the Complainant’s 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 Respondent’s 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 Complainant’s 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 Complainant’s 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 Complainant’s ISO mark and suffixed
with either an abbreviation reflecting the Complainant’s 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 Complainant’s 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 Respondent’s websites
as relating to the Complainant’s 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 Complainant’s 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 complainant’s 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 Complainant’s
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 Complainant’s business, none of the
Respondent’s disputed domain names are sufficiently distinguished from the Complainant’s
trademark. Coupled with the reference in the Respondent’s website to the Complainant’s
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 Respondent’s activities than of a primary intention
to use the disputed domain names to divert internet users to the Respondent’s
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