Home | Databases | WorldLII | Search | Feedback Generic Top Level Domain Name (gTLD) Decisions

International Organization for Standardization v. AQI [2004] GENDND 1482 (18 November 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

International Organization for Standardization v. AQI

Case No. D2004-0666

1. The Parties

The Complainant is International Organization for Standardization, Geneva, Switzerland, represented by Evgueni Patrikeev, Switzerland.

The Respondent is AQI, Pittsburgh, Pennsylvania, United States of America, represented by Sermin Caola, United States of America.

2. The Domain Names and Registrar

The disputed domain names <iso9000conference.com>, <iso9000directory.com>, <iso9000institute.com>, <iso9000standards.com>, are registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2004. On August 20, 2004, the Center transmitted a request for registrar verification in connection with the domain names at issue by e-mail to Network Solutions, LLC. On August 25, 2004, Network Solutions, LLC transmitted by e-mail 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 August 26, 2004. In accordance with the Rules, Paragraph 5(a), the due date for Response was September 15, 2004. As the Center granted the Respondent a one-week extension, the Response was filed with the Center September 22, 2004.

On October 7, 2004, the Complainant replied to the Response.

The Center appointed Christiane Féral-Schuhl, Luca Barbero and David E. Sorkin as panelists in this matter on October 20, 2004. The Panel finds that it was properly constituted. Each member of 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 October 25, 2004, the Respondent replied to the Complainant’s supplemental filing.

4. Factual Background

The Complainant is a non-profit, non-governmental organization comprising a worldwide federation of national standards bodies. The Complainant’s purpose is to promote the development of standardization and related activities in the world.

The Complainant owns the trademark “ISO” which has been registered for several years in most countries including in the United States of America where it has been registered since 1970. The Complainant uses the “ISO” name and mark to represent itself worldwide.

The ISO 9000 series of standards were developed and promoted by ISO and became famous all over the world.

The Respondent’s main activity for the past twelve years is to organize an event called the International Conference on ISO 9000 and to provide information on ISO 9000 and related standards.

The ISO 9000 denomination has been used for several years in the Respondent’s logo, main event name and e-mail address.

The Respondent registered the disputed domain name <iso9000directory.com> on December 14, 1995, and the three other disputed domain names <iso9000conference.com>, <iso9000institute.com> and <iso9000standards.com> on February 7 and February 8, 2001, respectively.

The disputed domain name <iso9000conference.com> is at present used for the website of the International Conference on ISO 9000 organized by the Respondent and the term “iso9000institute” is used in the Respondent’s e-mail address. Until 2003, the disputed domain name <iso9000directory.com> was used for the Conference’s website.

5. Parties’ Contentions

A. Complainant

The Complainant requests the transfer of the disputed domain names because of its rights on the ISO trademark, the Respondent’s lack of rights on the ISO mark and its bad faith when registering and using the disputed domain names.

The Complainant refers to previous UDRP decisions involving ISO and all in favor of ISO.

First, the Complainant contends that it has extensive rights in the ISO trademarks in the United States of America and worldwide.

In support of that contention, the Complainant notes that it has a famous worldwide activity: ISO has members in 148 countries, more than 30 000 experts from all parts of the world participate each year in the ISO technical work, some 570 international organizations have liaison status with ISO, and the World Trade Organization recognizes this importance for global trade of the international standards.

The Complainant claims that it has registered various trademarks in the United States of America, Switzerland and many other countries and that it uses the mark ISO to present itself in all languages.

The Complainant adds that during the 1990s, the name ISO gained increasing recognition due to the worldwide popularity of ISO 9000 series of standards and ISO 14000 series.

The Complainant asserts that it has used significant resources to develop and maintain the reputation of neutrality and integrity of the ISO mark.

The Complainant underlines that the ISO Central Secretariat coordinates the trademarks protection for the ISO marks in each member country. Its attention has been drawn to the increasing use of short name “iso” in the domain names of many companies without affiliation to ISO. Therefore, ISO published on its website a policy statement with regard to the use of ISO name on the Internet.

The Complainant stresses that the use of the ISO should be examined in consideration with the Second WIPO Domain Name Report which recommends the protection of names and acronyms of intergovernmental organizations.

Second, the Complainant contends that the disputed domain names are confusingly similar to the ISO trademark.

In support of that contention, the Complainant asserts that the combination of the mark ISO and the descriptive names “conference”, “directory”, “standards”, “institute” and “9000” is confusingly similar to ISO’s trademark and to the well-known ISO series of standards “ISO 9000”.

The Complainant adds that the use of the ISO mark in Respondent’s business name, logo, e-mail address as well as main event organized by Respondent leads the public to consider that it has been authorized to use this mark or that the Respondent’s activities are approved by the Complainant.

Third, the Complainant contends that the Respondent has no legitimate interest in the disputed domain names.

In support of that contention, the Complainant claims that the ISO mark is a “well-known” mark within its field of specialization and is therefore entitled to be protected all over the world, even in countries where it is unregistered.

The Complainant asserts that it could not find any registration of mark in relation to the ISO name and if the Respondent had sought to do so, Complainant would have opposed such an application.

The Complainant adds that, to the best of its knowledge, the Respondent has not made any legitimate non-commercial or fair use of the disputed domain names.

The Complainant claims that by using the name ISO, in particular in the disputed domain names, the Respondent intended to misappropriate the goodwill in the ISO’s trademark for it’s own commercial gain.

Fourth, the Complainant contends that the Respondent registered and used the disputed domain names in bad faith.

In support of that contention, the Complainant asserts that the services offered by the Respondent are directly related to ISO 9000 standards and that the Respondent tries to create an association with the Complainant.

The Complainant adds that the use of number “9000” in conjunction with the ISO mark reveals that the Respondent knew the Complainant’s reputation and tried to take unfair advantage of it.

B. Respondent

The Respondent requests the Panel to deny the remedies requested by the Complainant and to declare this case as an attempt for Reverse Domain Name Hijacking in accordance with Paragraph 15(e) of the Uniform Domain Name Resolution Policy Rules.

First, the Respondent contends that the disputed domain names are not confusingly similar to the ISO trademark.

In support of that contention, the Respondent asserts that the Complainant has no right on “iso9000”, that it is unregistered as a trademark by the Complainant.

The Respondent emphasizes that the disputed domain names use the name “iso9000” that refers to a generic technical term for a series of standards and cannot be confused with the name “iso” that refers to an organization (i.e., the Complainant). Quoting different Complainant’s publications, the Respondent assumes that the “iso9000” term is generic and therefore, that it is in the public domain.

The Respondent adds that other organizations have their own trademark or logo on “iso9000” (for example, the NASA website), that the term “iso9000” is displayed on thousands of products and services that are not the property of the Complainant and finally, that there are trademarks other than those owned by the Complainant that incorporate “iso9000” (for example, “ISO 9000 REGISTRATION”, “ISO TECH 9000”...).

The Respondent concludes by summarizing that “iso” and “iso9000” are related but are not equal and that the Complainant has exclusive rights to “iso” but not to “iso9000”.

Second, the Respondent contends that it has legitimate interest in the disputed domain names.

In support of that contention, the Respondent asserts that its main activity for the past twelve years has been to organize the International Conference on ISO 9000.

The Respondent emphasizes that the Complainant had known its logo and event name for these past twelve years and had never voiced any objection. The Respondent quotes different publications of the Complainant referring to the Respondent’s event or reproducing its logo or e-mail address using the “iso9000” name. The Respondent refers to different contacts with the Complainant’s representatives or to regular shipping of the Conference Brochure that were distributed with the Complainant’s monthly magazine.

The Respondent adds that for the past twelve years there has not been any confusion between the Complainant and the Respondent, the latter being located in the United States (Pittsburgh). The Respondent emphasizes the Complainant provides no evidence of the alleged confusion.

The Respondent claims that the <iso9000directory.com> domain name was registered in December 1995, four days before the Complainant registered the <iso.org> domain name. The Respondent adds that he registered the three other disputed domain names in February 2001, and not in October 2003, as asserted by the Complainant. The Respondent explains that when registering its first disputed domain name in December 1995, people were not aware of databases such as WHOIS. The Respondent adds that until recently the Complainant was known as “ISO Central Secretariat” and not just as “iso” and that the Complainant registered the word “iso” as its trademark with the US Patent Trademark office on March 22, 2004. Therefore the Respondent assumes “it would be fair to base the opinion on the name that the Complainant identified itself with at the time of creation of our domain names”.

Third, the Respondent contends that it registered and used the disputed domain names in good faith.

In support of that contention, the Respondent asserts that the differences between its logo and website and the logo and website of the Complainant must exclude bad faith if confusing similarities are criteria for bad faith as asserted by the Complainant.

The Respondent adds that it and the Complainant are not competitors: Complainant’s primary activity is to issue and sell standards, Respondent’s primary activity is to organize conferences and workshops.

The Respondent indicates it cannot conduct business without the disputed domain names.

The Respondent adds that in most of the five WIPO UDRP cases referred to by the Complainant there was no Response and that it questions the decisions on <isoninethousand.com> and <qs-iso9000.com> because these refer to the standards.

The Respondent concludes by asserting that the Complaint is based on the Complainant’s trademark. Yet the Complainant knew that it has no trademark rights on “iso9000”. Therefore, the Respondent emphasizes that if the Complaint knew or should have known that it could not prove one of the three elements, the case must be declared as an attempt for Reverse Domain Name Hijacking.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant demonstrates that it has had extensive rights on the ISO trademarks all over the world (including in the United States of America, first registration in 1970) for several years and that ISO trademarks are used for the Complainant’s international activities.

The combination of the mark “iso” with the number “9000” and the descriptive names “conference”, “directory”, “standards” and “institute” may lead part of the public to consider that the disputed domain names refer to the Complainant. The disputed domain names incorporate the Complainant’s mark in their entirety and the addition of generic and descriptive words (conference, directory, institute and standards) does not distinguish the disputed domain names from the Complainant’s trademark.

Therefore, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s mark.

B. Rights or Legitimate Interests

The Respondent cannot justify having registered the term “iso9000” as a trademark.

However, the Respondent can justify having regularly and widely used the domain name <iso9000directory.com> for the website of its main conference (International Conference on ISO 9000) until 2003. The Respondent can also justify currently using the domain name <iso9000conference.com> and the term “iso9000institute” in its e-mail address. Consequently, these disputed domain names have an essential place in the Respondent’s communication policy.

The Complainant knew of the Respondent’s use of the disputed domain names <iso9000directory.com> and <iso9000conference.com> and of the term “iso9000institute” in its e-mail address as they have been in regular contact since at least 1993. Furthermore, for the past twelve years, the Complainant did not voice any objection against this.

On the contrary, the Respondent does not justify its use of the disputed domain name <iso9000standards.com>.

Therefore, the Panel finds that the Respondent has legitimate interests on the disputed domain names <iso9000directory.com> and <iso9000conference.com> and <iso9000institute.com> but not on the disputed domain name <iso9000standards.com>.

C. Registered and Used in Bad Faith

The Respondent registered the <iso9000directory.com> in December 1995, and the three other disputed domain names in February 2001. The Complainant does not demonstrate that its policy statement with regard to the use of ISO’s name in the Internet was already published on its website when the Respondent registered the disputed domain names.

In addition and as previously emphasized, the Respondent used the <iso9000directory.com> then <iso9000conference.com> domain names and the “iso9000institute” term with Complainant’s knowledge for more than ten years without any reaction from the Complainant.

Therefore, the Panel finds that the Complainant has failed to prove that the disputed domain names were registered and/or used in bad faith.

7. Decision

The Panel acknowledges the prior UDPR decisions quoted by the Complainant but for all the foregoing facts and reasons, the Panel denies the Complaint.

A majority of the Panel declines to find Reverse Domain Name Hijacking in this case. One member of the Panel would find Reverse Domain Name Hijacking on the ground that there is no plausible argument that Respondent lacks rights or legitimate interests.

Christiane Féral-Schuhl Presiding Panelist

Luca Barbero Panelist

Dated: December 6, 2004

DISSENTING OPINION

Panelist David E. Sorkin’s opinion is as follows:

“I find that Complainant has failed to prove a lack of rights or legitimate interests in any of the disputed domain names, including <iso9000standards.com>. Furthermore, Respondent’s legitimate interests in at least some of the disputed domain names are so clear that I consider the Complaint to have been brought in bad faith, in an instance of Reverse Domain Name Hijacking.”

David E. Sorkin
Dissenting Panelist

Dated: December 6, 2004