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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

International Organization for Standardization ISO v. Noblitt & Rueland

Case No. D2007-1809

1. The Parties

The Complainant is International Organization for Standardization ISO, Geneva, Switzerland.

The Respondent is Noblitt & Rueland, Irvine, California, United States of America.

2. The Domain Names and Registrars

The disputed domain names <isotraining.com>, <isotraining.org> and <iso9001.org> are registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2007. On December 10, 2007, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain names at issue. On December 10, 2007, 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. 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 December 12, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 1, 2008. Although the Respondent sent a letter to the Center dated December 18, 2007, the Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on January 3, 2008.

The Center appointed John Swinson as the sole panelist in this matter on January 11, 2008. 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.

As stated above, while the Respondent filed no formal response, various correspondence was exchanged between the parties and the Center. The Respondent’s correspondence was submitted prior to the deadline for its response, and it is consistent with basic principles of equity and fairness to take the Respondent’s correspondence into account, particularly because the contents of such correspondence displays a willingness on the part of the Respondent to transfer the disputed domain names to the Complainant for no fee.

Consequently, the Panel finds that, in line with the authority vested in the Panel by virtue of paragraph 10(d) of the Rules, the correspondence exchanged between the Complainant and the Respondent shall form part of the record in this case.

On December 18, 2007, the Respondent sent correspondence to the Center and the Complainant. This correspondence outlined the Respondent’s reasons for its delay in responding to the complaint, and made various statements relating to the Respondent’s business and the disputed domain names. In particular, the Respondent noted that previous email communications from the Center had not been received due to spam blocker filtering or excess email.

In this letter, the Respondent describes its business as a consulting and training organization focused on assisting medical device manufacturers in the United States and globally, with medical device regulations (including regulations and standards of the United States and other countries, standards and guidance of the International Electrotechnical Commission and standards of the Complainant).

This letter set out two potential resolutions that the Respondent was willing to undertake to resolve this dispute. One option was to provide a disclaimer on its website stating that it has no affiliation with the Complainant, while the other option was to transfer the domain names, in return for reimbursement of the registration fees over nine years.

On December 19, 2007, the Center asked the Complainant whether it wished to suspend the administrative proceeding in order to reach a settlement with the Respondent.

On December 20, 2007, the Complainant sent an email to the Respondent stating that it would be willing to withdraw the complaint if the Respondent agreed to the immediate transfer of the disputed domain names. The email stated that the Complainant would not consider reimbursing the Respondent for past registration fees, but rather the Complainant would expect compensation and an undertaking that the Respondent commit not to register domain names comprising “ISO” in the future.

In a further email of December 21, 2007, the Respondent stated in an email to the Center “It sounds like for all parties, it is least burdensome to have the complaint withdrawn and proceed to transfer the domain names to the Complainant. This works for us as well, as we were not planning to renew the domains at the March anyway”.

On January 3, 2008, the Complainant refused to suspend the proceedings, citing the Respondent’s lack of reply to the Complainant’s previous emails (in particular to the email of December 20, 2007) and the Respondent’s request for payment. The Respondent responded by email on the same day, stating that the Respondent “offered to assist in the immediate transfer of the domain names (without any reimbursement of funds)”. The Respondent sent yet another email on January 4, 2008, stating “it seems we have agreed to the immediate transfer of the domain names. We are still willing to do this if you are interested”.

As this is the last of the correspondence on file, and in the absence of a subsequent request for suspension by the Complainant, the Panel has proceeded to determine the complaint on the basis that the parties did not reach an agreement.

4. Factual Background

The Complainant was established in 1947 and is a worldwide federation of national standards bodies with over 150 members. The Complainant is a not-for-profit, non-governmental organization.

The Complainant’s objective is to promote the development of standardization in the world, in order to help facilitate international exchange of goods and services. The results of the Complainant’s technical work are published as International Standards.

The ISO 9000 family of standards (relating to quality management requirements in business-to-business dealings) are some of the Complainant’s most well known standards. International Standard 9001:2000 is called “Quality Management Systems - Requirements”.

The Complainant first registered the trade mark “ISO” in Switzerland on March 25, 1953 (registration no. 146257). Since then the Complainant has registered the “ISO” trade mark in many countries around the world, including in the United States (for example, United States registration numbers 3073678, 3073681 and 3073684). These United States trade marks were registered on March 28, 2006.

The three disputed domain names are all linked to one website which promotes the services of the Respondent. On the website, the Respondent is described as “the leading medical device consulting firm specializing in technical FDA & international regulatory issues including Quality Systems, Design Control, Software, electronic recordkeeping & regulatory consulting for FDA & Internationally regulated medical industries”.

The Respondent states that it registered the three disputed domain names in March 1999.

The Complainant has a practice of approaching domain name registrants with “ISO” included in the domain, and asking them to relinquish the names. The Complainant did so in this case however when the Respondent did not respond, the Complainant initiated these proceedings.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

The Complainant has registered trade marks in over 100 countries, and the earliest registration dates back to 1977. The Complainant’s “ISO” trade mark is highly recognized world-wide.

The distinctive component of the disputed domain names is “ISO”, which is identical to the Complainant’s registered trade marks. The addition of the word “training” or the number “9001” are insufficient to remove the likelihood of consumer deception, particularly because 9001 is a reference to one of the Complainant’s main products. The word “training” is a generic reference which does not demonstrate that the website is operated by a third party unrelated to the Complainant.

All of the disputed domain names give an overall impression of a website sponsored by or affiliated with the Complainant.

The Respondent does not appear to have any trade mark rights in the disputed domain names, and does not appear to be commonly known by those names.

The information contained on the websites offer commercial activity (by providing consultancy and seminars). This is not a bona fide offering of goods or services because the Respondent knew that “ISO” was a protected trade mark.

The Complainant has not licensed or authorized the Respondent to use “ISO” in the disputed domain names.

If the Respondent had searched relevant trade mark databases it would have become aware of the Complainant’s trade mark rights. The Respondent therefore had constructive notice of the Complainant’s trade mark rights.

The Respondent registered the disputed domain names a long time after the Complainant established its trade mark rights in “ISO”.

It can be inferred that the Respondent knew of the Complainant and its business because the website linked to the disputed domain names is offering consultancy services related to the Complainant’s standards. The Complainant is genuinely known for providing training and consultancy services (the same services being provided by the Respondent).

The Respondent is trying to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trade mark. The Respondent is offering services competitive to the Complainant.

The Complainant informed the Respondent of its trade mark rights in “ISO” by email on October 17, 2007, and again on November 7, 2007. The Respondent did not respond to either email. The Respondent has acted in bad faith by not responding to the Complainant’s requests.

B. Respondent

The Respondent did not file a formal reply. However in the Respondent’s correspondence of December 18, 2007, it makes the following statements:

The disputed domain names are topics directly related to the Respondent’s business, as the Respondent trains and consults on ISO standards which are related to medical devices.

Ten years ago, the quality standard for medical device manufacturing was ISO 9001, but that number has now changed.

The websites operating from the disputed domain names were not developed specifically to mirror the disputed domain names – they automatically redirect to the Respondent’s main website.

The Respondent supports the Complainant’s business. For example, the Respondent has purchased ISO standards for its clients and students, including a license for 1000 copies of ISO 9001.

The Respondent denies any ill intent or bad faith towards the Complainant, or intention to confuse or deceive consumers.

After holding the disputed domain names for nine years, the Respondent has not encountered any confusion between its websites or business and the business of the Complainant.

6. Discussion and Findings

In order to succeed on its claim, the Complainant must show that all the elements set out in paragraph 4(a) of the Policy have been satisfied. The burden of proof is on the Complainant to show:

(i) the disputed 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 interests in the disputed domain names; and

(iii) the disputed domain names have been registered and used by the Respondent in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel must decide this complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

To prove this element the Complainant must have trade mark rights, and the disputed domain names must be identical or confusingly similar to the Complainant’s trade mark.

The Panel finds that the Complainant has longstanding and established trade mark rights in “ISO” both by registration and also at common law. All of the disputed domain names incorporate the Complainant’s “ISO” trade mark in its entirety at the beginning of the domain names.

The disputed domain names also contain additional words or figures. The addition of the number 9001 in the <iso9001.org> domain name reinforces the domain name’s connection with the Complainant and its International Standards, because 9001 is a reference to one of the Complainant’s most well known products (relating to quality management in business). The addition of “9001” is not sufficient to exclude confusing similarity with the Complainant’s trade mark because the term “iso9001” creates an overall impression of a website which is sponsored by or affiliated with the Complainant, and which specifically relates to International Standard 9001. The <iso9001.org> domain name is therefore confusingly similar to the Complainant’s “ISO” trade mark.

In relation to the <isotraining.com> and <isotraining.org> domain names, the addition of the generic and descriptive word “training” does not distinguish the disputed domain names from the Complainant’s trade mark (see International Organization for Standardization ISO v. Quality Practitioners Institute and Website Pros, Inc. and Quality, WIPO Case No. D2005-1028). “Training” is a concept which is clearly relevant to ISO standards and implies that the website will provide tools and assistance in relation to ISO standards. The <isotraining.com> and <isotraining.org> domain names are therefore confusingly similar to the Complainant’s “ISO” trade mark.

Accordingly, the Panel finds that the first criterion is satisfied.

B. Rights or Legitimate Interests

In order to meet this element, the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the disputed domain names. Paragraph 4(c) of the Policy sets out three, non-exhaustive examples of rights or legitimate interests:

(i) prior to receiving notice of the dispute, the Respondent has used, or made demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services;

(ii) the Respondent is commonly known by the disputed domain names, even if there are no trade mark or service mark rights;

(iii) the Respondent is making a legitimate non-commercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

The Complainant is only required to raise a prima facie case under this element. Once the Complainant does so, the Respondent then has an evidential burden to rebut the prima facie case.

The Complainant has cited a number of successful prior Panel decisions in its complaint. However, there are several decisions (not referred to by the Complainant) where the Complainant’s complaint was denied in circumstances where the Panel found that the respondent in each case did have rights and legitimate interests – International Organization for Standardization ISO v. Capaccio Environmental Engineering Inc, WIPO Case No. D2006-1190 (because the Respondent had a State service mark registration and used the website to provide information and services related to the ISO9000 standard) and International Organization for Standardization v. AQI, WIPO Case No. D2004-0666 (because of the terms used in the domain names and the length of time which had passed since first use).

As noted in the Capaccio decision, there are several United States federal trade mark registrations, not in the Complainant’s name which contain the term “ISO”, such as ISO 9001 CERTIFIED AC (No. 2733768), ISO 9000 Registration and device (No. 2952686), ISO 9000:2000 REGISTERED QUALITY MANAGEMENT SYSTEM and device (No. 2981903), ISO 9000 and device (No. 2068572) and DEMYSTIFYING ISO 9000 (No. 2018482). However, the US Patent and Trademark Office requires a disclaimer of the term ISO 9000 in each of these marks.

While parties other than the Complainant may have some rights in “ISO” and similar phrases, there is no evidence before the Panel that demonstrates that the Respondent has any right or interest in “ISO”. There is no evidence that the Respondent is commonly known by the disputed domain names or the term “ISO”.

The Respondent is not making a legitimate non-commercial or fair use of the disputed domain names. All disputed domain names directly link to the Respondent’s main website, which markets the Respondent’s consultancy and training services in, among other things, ISO products. Similar to the case of International Organization for Standardization ISO v. Root Research, Inc., WIPO Case No. D2001-1194, use of “iso” in the disputed domain names creates the impression of an association with the Complainant and misappropriates the reputation of the Complainant’s mark for the Respondent’s commercial advantage. The Respondent cannot be said to be making a bona fide offering of goods or services prior to notice of the dispute because, as evidenced by the Respondent’s correspondence of December 18, 2007, the Respondent was aware at all times that “ISO” was a protected trade mark. Deliberately infringing use should not be considered bona fide use (Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847).

The Respondent is consciously and knowingly referring to the trade mark of the Complainant in the disputed domain names. The Respondent’s website is being used in relation to the business of the Complainant. It would appear that the Respondent would need a license from the Complainant to continue to use the trade mark in the disputed domain names. The Complainant has not licensed the “ISO” trade mark to the Respondent, or authorized the Respondent to use the mark. The absence of license or authorization establishes here the absence of legitimate right by the Respondent (see International Organization for Standardization ISO v. Lucid, WIPO Case No. D2005-0903).

The Complainant has presented a prima facie case indicating that the Respondent does not have any rights or legitimate interests in the disputed domain names. The Respondent has not filed any response in this proceeding, but has provided correspondence to the Center which the Panel has chosen to take into account. This correspondence is not sufficient to rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the second criterion is satisfied.

C. Registered and Used in Bad Faith

The Complainant alleges that the Respondent had constructive knowledge of the Complainant’s trade mark rights and this is sufficient to show bad faith on the part of the Respondent. The correspondence provided by the Respondent make it clear that it was aware of the Complainant’s reputation and trade marks, and that is the reason it registered the disputed domain names. The Respondent clearly chose the disputed domain names to align its business with that of the Complainant. This type of activity clearly fits within paragraph 4(b)(iv) of the Policy:

“by using the domain name(s), the Respondent intentionally attempted to attract for commercial gain, internet users to the Respondent’s website or 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 on-line location or of a product or service on the Respondent’s website or location.”

The Respondent’s business trains people in the use of the Complainant’s standards (among other standards and regulations), and the Respondent registered the disputed domain names because its business provided training and consultancy in relation to the Complainant’s ISO products. The Respondent’s website is related to activities for which the Complainant is genuinely known. This shows that the Respondent chose the disputed domain names to draw Internet users to its site (through use of the mark “ISO”) in order to make a financial gain.

The Panel determines that the Respondent registered and used the disputed domain names in bad faith.

7. Decision

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, <isotraining.com>, <isotraining.org> and <iso9001.org> be transferred to the Complainant.


John Swinson
Sole Panelist

Dated: January 25, 2008

 

Источник информации: https://internet-law.ru/intlaw/udrp/2007/d2007-1809.html

 

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