DECISION

International Information Systems Security Cerification Consorttium (ISC)2 v. Rifin d.o.o.

Claim Number: FA0302000145282

PARTIES

Complainant is International Information Systems Security Cerification Consortium (ISC)², Framingham, MA (“Complainant”) represented by Arthur G. Schaier, of Carmody & Torrance LLP.  Respondent is Sebastian O'Neil Rifin d.o.o., Zagreb, II, HR (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <isc2.com>, registered with Easyspace Ltd.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Bruce E. Meyerson as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on February 13, 2003; the Forum received a hard copy of the Complaint on February 14, 2003.

On February 26, 2003, Easyspace Ltd. confirmed by e-mail to the Forum that the domain name <isc2.com> is registered with Easyspace Ltd. and that Respondent is the current registrant of the name.  Easyspace Ltd. has verified that Respondent is bound by the Easyspace Ltd. registration agreement and has thereby agreed to resolve domain name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On February 26, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 18, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@isc2.com by e-mail.

A timely Response was received and determined to be complete on March 13, 2003.

Complainant’s additional submission was timely received on March 17, 2003. Respondent’s additional submission was timely received on March 19, 2003.

On March 27, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson as Panelist.

On April 7, 2003, the Panel requested the parties to submit additional information regarding the contention by Respondent that Complainant had “relinquished” the domain name at issue.  Both parties timely submitted a response to this request.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS (Including Additional Submissions)

A. Complainant

 

Complainant International Information Systems Security Certification Consortium (ISC)², is a global, not-for-profit organization that was formed in 1989 to develop an accepted industry standard for the information security practice.  Complainant states that it has provided certification to thousands of information security professionals in over 80 countries worldwide, including over 452 professionals in the United Kingdom, who have attained certification as Certified Information Systems Security Professionals.   Complainant’s domain name is <isc2.org>.  The <isc2.org> domain name was registered by Complainant on November 12, 1996.

Currently, Complainant has a pending United States application for federal registration of the mark (ISC)².  This application was filed on September 21, 2001, and published for opposition on October 29, 2002.   The Complainant also has an application pending at the Patent Office in the United Kingdom for the mark (ISC)².  The filing of this application was made on March 18, 2002. 

 Complainant states that the domain name <isc2.com> is confusingly similar to the Complainant’s mark, (ISC)², because both the Complainant’s mark and the domain name at issue comprise the same character string “isc2.” Complainant contends that the mark is unique and exclusively used by the Complainant in the United States, the United Kingdom, and throughout the world.   Complainant contends that the original Registrant was known as E-Fortress and/or CompuLab and is not, nor, upon information and belief, has it ever been, known by the acronym or initials ISC2 in any form.

B. Respondent

Respondent contends that he bought the disputed domain name in good faith, under competition, fairly and has a valid use for it.  Respondent states that he is the legal owner of the domain name and has more right to the name than the Complainant.    Respondent contends that before he purchased the domain name, the Complainant was a previous owner.  Thus, Respondent contends that the Complainant has relinquished this domain into the market intentionally.  Because Respondent thought that the name had been relinquished by mistake, he did “not do anything with the domain for a number of months.”  According to Respondent, once he was confident that he had obtained the name fairly and legally, he decided to promote his own business venture.  Respondent claims to have looked for a suitable name for his company and came up with “Internet Security Company 2.”  He states that because he is the legal owner of the domain name, he adjusted his identify to fit the domain name.  Respondent contends that he bought the domain name in good faith, under competition, and that he has a valid use for it. Respondent states that he is willing to accept a comparatively modest sum in exchange for the sale of the domain name.

FINDINGS

            Complainant holds the registration for the <isc2.org> domain name, which was registered on November 12, 1996. Currently, Complainant has a U.S. Patent and Trademark Office registration pending for the (ISC)² mark (Ser. No. 76,316,029).  Complainant’s application for trademark registration was filed on September 21, 2001, and was published for opposition on October 29, 2002.  Complainant also has a pending trademark application filed with the Patent Office in the United Kingdom.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant holds the registration for the <isc2.org> domain name, which was registered on November 12, 1996. Currently, Complainant has a U.S. Patent and Trademark Office registration pending for the (ISC)² mark (Ser. No. 76,316,029).  Complainant’s application for trademark registration was filed on September 21, 2001, and was published for opposition on October 29, 2002.  Complainant also has a pending trademark application filed with the Patent Office in the United Kingdom. Under the circumstances,  Complainant has sufficiently established rights in the (ISC)² mark for the purposes of the Policy.  See, e.g.,  SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000); British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000);  Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000).

Complainant asserts that Respondent’s <isc2.com> domain name is confusingly similar to Complainant’s (ISC)² mark. Complainant argues that Respondent’s domain name incorporates the identical letter string of “isc2” into the second-level domain.  The Panel concurs that the domain name is confusingly similar to Complainant’s mark.  See, e.g., Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000); Kabushiki Kaisha Toshiba v. Shan Computers, D2000-0325 (WIPO June 27, 2000); DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000).  

Rights or Legitimate Interests

The record reflects that Respondent’s initial website advertised an entity known as “E-Fortress,” which provided information security services. Following the initiation of this dispute, Respondent changed the website’s contents to “under construction” and sought to identify itself as “internet security company 2.” The modification of a website after the initiation of a dispute has been found to demonstrate the lack of rights or legitimate interests.  Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that respondent had no rights or legitimate interests where he decided to develop the website for the sale of wall products after receiving complainant’s “cease and desist” notice);  Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and respondent is not commonly known by the domain name).

In its initial submissions Respondent asserted that it had rights to the domain name because Complainant had, in effect, abandoned it by “relinquishing” it into the market.  The Panel requested the parties to present documentation on this point.  Based upon the documentation presented the Panel finds that the record contains no evidence to support Respondent’s contention that Complainant previously had owned the domain name and then relinquished it.

Registration and Use in Bad Faith

The Panel finds that Complainant has established that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) which permits a finding of bad faith where the respondent has intentionally attempted to attract for commercial gain, Internet users to his site, by creating a likelihood of confusion with the complainant’s mark.  The initial complaint in this matter was filed on February 12, 2003.  An amended complaint was filed seven days later. The record reflects that during this period, Respondent changed the website to make it appear as though a legitimate entity, “internet security company 2” is behind the website.  Moreover, the record indicates that Respondent’s website now purports to be held by “internet security company 2” and the site purports to offer services materially similar to those services offered by Complainant.  Yet, Respondent has come forward with no evidence that it has been commonly known by this name or that it has ever provided services under this name.  Indeed, the record indicates that the site remains under construction.  Under these circumstances, Complainant has sufficiently made out a case for bad faith registration of the domain name.  Although Respondent does not appear to be actually engaged in the business it portrays on its website, it may still be found in violation of Policy ¶ 4(b)(iv) where the evidence indicates that it has registered the domain name for the purpose of damaging the business of the Complainant.  See generally R. Badgley, Domain Name Disputes § 8.11 n. 185-87 (2002).  Such an inference can be drawn from this record.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <isc2.com> domain name be TRANSFERRED from Respondent to Complainant.

Bruce E. Meyerson, Panelist
Dated: April 25, 2003

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