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and Mediation Center
International Organization for Standardization ISO v. Lucid
Case No. D2005-0903
1. The Parties
The Complainant is the International Organization for Standardization ISO, Geneva, Switzerland, represented by its legal advisor.
The Respondent is Lucid, Los Alamitos, California, United States of America.
2. The Domain Names and Registrars
The disputed domain name <iso1stop.com> is registered with Network Solutions, LLC.
The disputed domain name <iso9000commerce.com> is registered with InnerWise,
Inc. d/b/a ItsYourDomain.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 23, 2005. On August 24, 2005, the Center transmitted by email to Network Solutions, LLC and InnerWise, Inc. d/b/a ItsYourDomain.com a request for registrar verification in connection with the domain names at issue. On August 26, 2005, Network Solutions, LLC 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.
On August 29, 2005, InnerWise, Inc. d/b/a ItsYourDomain.com 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 August 30, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was September 19, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 23, 2005.
The Center appointed Nasser A. Khasawneh as the sole panelist in this matter on October 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.
On Tuesday October 11, 2005, the Respondent sent two
emails directly to the Panel, copying the Center and the Complainant. In these
emails, the Respondent outlined the reasons for the delay in responding and
responded to the statements of the Complainant. The Panel reviewed the statements
of the Respondent in these aforementioned emails. While the response was indeed
submitted after the passing of the deadline, the Panel found it in line with
the basic principles of equity and fairness to review the arguments of the Respondent.
The response was received while the Panel was reviewing the case, and before
it had reached a conclusion thereon. Consequently, the Panel finds that, in
line with the authority vested in the Panel by virtue of paragraph 10(d) of
the Rules, the email response of the Respondent’s shall form part of the
record in this case.
4. Factual Background
The Complainant is a world-famous organization. As summarized in its Complaint, the Complainant is a non-profit, non-governmental organization established in 1947: “It is a worldwide federation of national standards bodies… ISO has members in 153 countries. A member body of ISO is the national body “most representative of standardization in its country” and each member body shares responsibility for protecting the interests of ISO within its jurisdiction… 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 Complainant’s first registration of ISO trademark was made in Switzerland on March 25, 1953. Since then, ISO trademarks have been registered in most countries of the world.
The Respondent first registered the disputed domain
names on June 16, 1999, and April 17, 2000.
5. Parties’ Contentions
The Complainant contends that (quotation marks are used when statements are taken from the Complaint):
“The disputed domain names are identical or confusingly similar to the registered trademarks “ISO” worldwide including to ISO’s Trademark No. 0909170, registered in the USA on 2 March 1971.” The Complainant supports this contention with a number of arguments including:
- “The dominant and distinctive component of
the disputed domain names is “ISO”, which is identical to Complainant’s
registered trademark. The additional words “1stop” and “9000commerce”
are insufficient to remove the likelihood of consumer deception. In particular,
“1stop” is a generic reference that does not convey any information
that would indicate that the website is owned by a third party unrelated to
ISO.” The Complainant then refers to various precedents which “establish
that the addition of generic words to a mark in order to form a domain name
is insufficient to dispel confusing similarity (cf. WIPO Cases D2000-0712
<3mcare.com> and D2001-1231
<bmwbikes.com> et al.).” “As for the addition
of “9000” and “commerce” in the second domain name,
“9000” associated to ISO makes it a genuine reference to the well-known
family of international standards ISO 9000 for which ISO enjoys worldwide reputation.
The word “commerce” is a generic word that conveys no information
that may indicate that a third party unconnected to ISO is running the site.”
- The disputed domain names “engender an overall impression of a website sponsored by or affiliated with the International Organization for Standardization ISO.”
The Respondent has no rights or legitimate interests
in respect of the domain names. The Complainant supports this contention
with various arguments including:
- “Internet research undertaken by the Complainant, including trademark searches in the USPTO database and Madrid Express (WIPO), excludes any trademark rights by Respondent in the domain names and suggests that the Respondent is not commonly known by either of them, but as “Lucid” or “Lucid International”.
- “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.”
- Respondent is clearly using the site for commercial purposes, with the aim of providing consultancies and seminars regarding the ISO system.
- “Respondent has never been authorized to use “ISO” in its domain names, rather on the contrary, has been urged to discontinue the use of its domain names on several occasions.”
The domain names were registered and are being used in bad faith. The arguments presented by the Complainant in this regard include:
- “Respondent registered the challenged domain names long after Complainant registered the ISO mark.”
- “It is clear that Respondent knew of Complainant and its activities when he registered the domain names. Furthermore, the recent renewal of the domain name <iso1stop.com> on April 26, 2005, for a further period of three years once Respondent was extensively warned about its unlawful conduct, constitutes irrefutable evidence of the registration of the domain name in bad faith.”
- “By using the domain name(s), the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s web site 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 web site or location or of a product or service on the Respondent’s web site or location. 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 Respondent’s websites and would order Respondent’s products and/or services under the impression that they are actually ordering those products/services from the International Organization for Standardization ISO.”
- Respondent’s websites include a number of elements which suggest that Complainant endorses or is associated to Respondent. The Complainant drew the attention of the Panel to the following: the use in Respondent’s websites of ISO copyrighted publications, the presence of numerous links from Respondent’s websites to Complainant’s website, and the naming of Respondent’s products after famous ISO products.
- The use of the ISO logo on the sites of the disputed domain names.
- The lack of timely response to the Complaint.
Various previous UDRP decisions have confirmed the complainant’s rights in cases involving disputed domain names similar to those in this case.
The Respondent did not reply within the set deadline to the Complainant’s contentions. However, as mentioned above, the Respondent made email submissions outlining its position. The Panel decided to take those submissions into consideration. The Respondent’s arguments are mainly centered on the following themes:
- Irrelevance of lack of response – the Respondent states: “Our seeming lack of response is not admission of anything and you should not draw any inference from it. It simply means we have been busy making living. We don’t have time nor resources to compose complex legal documents like you can.”
- Ignorance of issues involved and willingness to cooperate –Respondent states that it does not understand the legal issues involved and the rights of the Complainant, if any: “We are ignorant in this issue but we will cooperate with ISO and we have taken actions to phase out the disputed domains. We don’t have resources to determine if ISO’s claim is valid or not. As we stated repeatedly, we do not intend to cause any harm to ISO and we don’t believe we ever have. Again, we don’t know if using those domains ise legal or not and based on what law. We still see many domains and products that include the term “ISO” and names of ISO standards. As we communicated to ISO before, we intend to phase out the two domains w/in couple of months. We’ve already posted office announcement on our website informing the public about the change.”
- No copyright infringement – the Respondent states: “You claim that we’ve removed a number ISO documents from our website. We never hosted any ISO documents on our website. For the benefit of general public, we’ve provided links to ISO website in a separate window. In a way, we provide free link to ISO website on ours.”
- Past mail exchange misrepresented: the Respondent
states that “even though we explained already, you continue to misrepresent
the February 16, 2000 e-mail you continue to bring up. We responded to that
e-mail and we never got any reply or any other communication since then until
ISO chose to file this dispute without any communication with us. We concluded
that the lack of reply to our response in 2000 was ISO agreement to our response.”
6. Discussion and Findings
A. Identical or Confusingly Similar
There is no doubt that the Complainant has longstanding and registered rights in the ISO trademark. The disputed domain names reproduce the ISO trademark in its entirety, coupled with other words that do not affect the distinctiveness of the mark. In the first disputed domain name, the word ISO is followed by the term “1stop”. In the second disputed domain name, the word ISO is followed by “9000commerce.” The addition of generic words such as “commerce” or phrases with generic meaning such as “1stop” do not alter the fact that the Respondent is copying a mark identical to that of the Complainant.
Furthermore, it is clear that the phrases added to the ISO mark are meant to associate the disputed domain names with the business of the Complainant. The word “1stop” clearly implies that the site in question is providing a “one-stop” source of information or expertise regarding the ISO system. As for the second disputed domain name, it is important to note that ISO 9000 actually happens to be one of the best known products of the Complainant.
Consequently, the Panel finds that the disputed domain names are confusingly
similar with the registered ISO trademark of the Complainant. This combination
of the ISO mark with generic terms that clearly associate with the business
of the Complainant satisfies the first test of the Policy. This conclusion of
the Panel is supported by various previous UDRP decisions, including decisions
in similar cases involving the Complainant’s ISO mark. For example, the
Panel draws attention to WIPO Case No. D2002–0460,
in which the disputed domain names were <isoquality.com>, <isoaudit.com>
and <isoconsultant>. In that case, the panel stated:
“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.”
The same rationale applies in this case.
The Panel, therefore, finds that the first test under the Policy is satisfied in favour of the Complainant.
B. Rights or Legitimate Interests
This Panel finds that the key issue here is authorization from the Complainant
or lack thereof. As mentioned above, it is a fact that the Respondent is consciously
and knowingly referring to the trademark of the Complainant in the disputed
domain names. When the Panel ran an online search on the websites associated
with the disputed domain names, the sites were marketing the Respondent’s
business of providing consultancy and training regarding ISO products. In other
words, the site was being used openly in relation to the business of the Complainant.
Consequently, it would appear that the Respondent needed a license from the
Complainant in order to use the Complainant’s trademark in the disputed
domain names and in the content of the corresponding web sites. The absence
of such a license or authorization from the Complainant establishes the absence
of legitimate right by the Respondent in the disputed domain names. The Panel
is supported in this conclusion by various previous UDRP decisions, including
cases which involved the trademark of the Complainant. For example, the Panel
refers to International Organization for Standardization v. Root Research
Inc., WIPO Case No. D2001–1194
(involving several disputed domain names, including <isostandards.org>).
In that case, the first reason cited by the panel for finding that the respondent
had no legitimate right or interest in the disputed domain names was stated
as follows: “The Complainant has not licensed the acronym “ISO”
to the Respondent.”
This lack of authorization, in the Panel’s view makes it impossible for the Respondent to demonstrate legitimate right or interest in the context of paragraph (c) of the Policy. In this paragraph, the following are listed as circumstances that, if proven, would demonstrate a respondent’s legitimate interest or right in a disputed domain name:
(i) Use of, or demonstrable preparations to use, the domain name in connection
with a bona fide offering of goods or services; or
(ii) The respondent is commonly known by the domain name, even without acquiring
trademark or service mark rights; or
(iii) The respondent is making a legitimate non-commercial or fair use of the
domain name, without intent for commercial gain to misleadingly diverting consumers
or to tarnish the trademark or service mark at issue.
The Panel holds that none of the above circumstances apply to the case at hand, particularly in light of the Respondent’s knowledge of the Complainant’s marks and its association therewith. First of all, the use of the disputed domain names cannot be characterized as bona fide as the Respondent failed to seek a license from the Complainant to use its mark. The Respondent’s avowed ignorance in this regard is not convincing. Given that the sites of the disputed domain names are entirely based on the Complainant and its ISO system, the Respondent must have known, or at least should have known, that such a use of the ISO mark required authorization from the Complainant. Secondly, there is no evidence to suggest to the Panel that the Respondent is commonly known by the disputed domain names. The Respondent’s business seems to derive its identity from the link with the Complainant’s ISO system. The brand recognition in this case centers on the Complainant and not the Respondent. Finally, paragraph 4(c)(iii) cannot apply to this case as the Respondent is making a commercial use of the disputed domain names.
Consequently, the Panel finds for the Complainant on the second element of the Policy.
C. Registered and Used in Bad Faith
The Respondent states that it wants and is willing to cooperate in finding a solution. It is repeatedly asking the Center to explain the issue to it. Also, the Respondent is constantly claiming ignorance of the law, the issues involved and the rights of the Complainant. Furthermore, the Respondent has indeed already posted the following announcement on its site:
“Announcement: new domain name --> Quality1stop.com
We’re changing this website’s domain name. We will discontinue iso1stop.com and iso9000commerce.com. Thank you for your continuing patronage.”
All of the above can be construed as signs of good faith by the Respondent. However, when the Center asked the Complainant whether it wished to suspend the administrative proceeding in order to reach a settlement with the Respondent, the former refused stating that the Respondent “has never cooperated in previous attempts to settle this matter.”
When the Panel reviewed a previous correspondence between the parties in 2002, it found the Complainant’s concern about the Respondent’s earnestness in reaching a settlement to be valid. On March 4, 2002, the Respondent replied to a warning email from the Complainant by, once again, confirming its willingness to “clear up this matter.” Also, the Respondent promised to have its “legal staff” review the matter. Therefore, the ball was in the Respondent’s court to get back to the Complainant. However, there was no follow up by the Respondent after this email. The Complainant sent a reminder email regarding the review by the Respondent’s “legal staff” and presented a new warning to the Complainant. This exchange is highly instructive. It means that three years ago, the Respondent was very much aware of the concerns of the Complainant, and it promised to resolve them. However, the Respondent did not act on its promises in 2002, and that makes the Complainant suspicious of the Respondent’s current attitude. Furthermore, the Panel is particularly struck by the Respondent’s reference to its “legal staff” in the 2002 exchange. If indeed the Respondent has legal resources and staff to look into the matter, how does this tally with its declaration in its October 11, 2005 email to the Panel that it does not have the resources to respond to this Complaint. In this last email, the Respondent proclaims “we are not lawyers … we can’t afford to hire lawyers.”
This last point is symptomatic of the email exchanges of the Respondent. While initially the Panel was heartened by the Respondent’s attitude of cooperation, a growing sense of discomfort grew as the Panel read more of the Respondent’s email. The emails of the last two months, and the email of 2002, came to represent a potential pattern of behavior by the Respondent. It is as though the Respondent is using its willingness to cooperate as a cover to delay or camouflage matters, in the hope that the threat goes away. Actually, in its last emails, the Respondent seems to be asking the Center to give it the answer. It is a strange state of affairs, with the Respondent constantly declaring a cooperative attitude, yet refusing to accept the Complainant’s demands.
Paragraph 4(b) of the Policy sets out a number of circumstances, each of which shall provide evidence of registration and use in bad faith. The fourth such circumstance is defined as follows:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
It is the view of this Panel that, on a balance of probabilities, the above circumstance applies to this case. As mentioned above, the Respondent’s business centers entirely on that of the Complainant, the Respondent registered its disputed domain names with the intention of linking them to the Complainant’s ISO products, the Respondent renewed the domain name <iso1stop.com> on April 26, 2005 while fully aware of the Complainant’s position, and the Respondent links its training and other activities directly with ISO on its websites. All these facts and circumstances, seen as a whole, clearly show that the choice of domain names by the Respondent is meant to draw Internet users to its site (through the connection with the word ISO), persuade them that the site is an authority on ISO products, and make financial gain from these connections. Consequently, the Panel concludes that paragraph 4(b)(iv) applies to this case.
In reaching the above conclusions on the issue of registration and use in bad faith, the Panel was guided by previous UDRP decisions in cases involving the same Complainant and similar circumstances. By way of example, the Panel draws attention to the following Decisions:
∙ International Organization for Standardization v. Root Reseach Inc.,
WIPO Case No. D2001-1194 (disputed
domain names including <iso-qa.com>). The panel found the respondent to
be “acting in bad faith pursuant to paragraph 4(b)(iv) of the Policy.”
∙ International Organization for Standardization v. International
Supplier Operations Audit Services, WIPO Case No. D2002-0460
(disputed domain names including <isoquality.com>). Under the third test,
“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.”
∙ International Organization for Standardization v. International
ISO Group Inc., WIPO Case No. D2004-0376
(disputed domain names including <isoquality.com>). The panel here found
that the respondent was acting in bad faith because, inter alia, the
respondent had the alternative to choose from a “range of non-infringing
alternative terms relating to the standards industry”, instead of including
the ISO trademark in its disputed domain name.
For all the above reasons, the Panel finds that the Respondent registered and
is using the disputed domain names in bad faith.
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 <iso1stop.com> and <iso9000commerce.com> be transferred to the Complainant.
Nasser Ali Khasawneh
Dated: October 18, 2005