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International Organization for Standardization v. International ISO Group, Inc. [2004] GENDND 893 (16 July 2004)

1. The Parties

The Complainant is International Organization for Standardization, Genève, Switzerland, represented by Steptoe & Johnson LLP, United Kingdom of Great Britain and Northern Ireland.

The Respondent is International ISO Group, Inc., Ohio, United States of America.

2. The Domain Name and Registrar

The disputed domain name <qs-iso9000.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 May 24, 2004, received in hardcopy on June 1, 2004. On May 24, 2004, the Center transmitted by email to InnerWise, Inc. d/b/a ItsYourDomain.com a request for registrar verification in connection with the domain name at issue. On June  2, 2004, 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 June 3, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was June 23, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 25, 2004.

On June 29, 2004, an email was received by the Center from the Respondent. This email attached a cover letter referring to a correspondence already exchanged with the Complainant and a copy of a letter addressed to the Complainant on February 26, 2004. This email invited the Center to consider it as the Response in the present procedure.

The Center appointed Luca Barbero as the sole panelist in this matter on July 1, 2004. 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.

The Panel, pursuant to paragraphs 10(a), (b) and (d) of the Policy, has decided to consider the Respondent’s late filing in light of the reasons indicated by the Respondent in the cover letter. Since the same document was already annexed also to the Compliant and dealt with by the Complainant, the Panel pursuant to paragraph 10(c) also decided not to grant an additional extension of time to the Complainant, to file a supplemental filing with reference to the Respondent’s email of June 29, 2004, of the Respondent and to proceed to issue the decision.

4. Factual Background

The Complaint is based on a number of trademark registration and application in a number of countries for the trademark ISO including the trademark registration in N. 909170 in class 16, first filed on August 7, 1970, and registered on March 2, 1971, in the Unites States.

The Respondent registered the domain name <qs-iso9000.com> on August 19, 1997.

5. Parties’ Contentions

A. Complainant

The Complainant in this administrative proceeding is the International Organization for Standardization, a non-profit, non-governmental organization comprising of a worldwide federation of national standards bodies. It has members from 146 countries (one member from each country, a body which is “most representative of standardization in its country”), including the United States of America where the Complainant’s member is American National Standards Institute (ANSI).

The Complainant indicates that the mission 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 scope of ISO covers standardization in all fields except electrical and electronic engineering and ISO standards add value to all types of business operations.

The Complainant underlines that significant resources have been invested to develop and maintain the ISO mark which is a highly recognised worldwide trademark 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 most countries. In the 1990’s, the ISO name gained increasing recognition due to the worldwide popularity of first, the ISO 9000 series of standards, later joined by the ISO 14000 series. The ISO 3166 standard for country codes is the basis for the two-letter country designations (e.g., .ch, .fr, .uk, .us) in the Internet domain name system (DNS).

The Panel was provided with a sample of press clippings from around the world concerning ISO and its work illustrating the world-wide prominence of ISO and its mark, including an extract of the Oxford Concise Dictionary (10^th Ed. 1999) defines “ISO” as the “International Organization for Standardization”.

ISO has registered various trademarks in the United States, Switzerland and many other jurisdictions and the Panel was provided with a summary of the registered trademarks together with copies of some of the trademark registration documents.

With reference to the confusingly similarity, the Complaint emphasizes that the use of the domain name <qs-iso9000.com> by the Respondent misleads third parties into believing that it represents ISO, has been approved or authorized to act on behalf of ISO, or is otherwise associated with ISO. The combination of the “QS” mark, the “ISO” mark and “9000”, is confusingly similar to ISO’s trademark, and remarkably similar to the well known ISO series of standards “ISO 9000” (which itself forms part of the Automotive Industry Action Group’s standard QS 9000, the abbreviation “qs” is used for “quality system”).

According to the Complainant, such “coupling to the ISO mark thus creates a domain name that is intentionally and expressly suggestive of, and confusingly similar to, ISO’s trademark, with the effect of bringing across exactly associations with the Complainant and its activities. It is highly likely that the domain name would lead a viewer to conclude incorrectly that the product, service or information is offered by or with the consent of the Complainant and due to this type of confusion, ISO receives many complaints from the public on bad service rendered to them by companies supposedly associated with or certified to ISO 9000 standards.”

Furthermore, the Complainant indicates that the use of the “ISO” mark and domain name as part of its business name, logo and email address by the Respondent misleads third parties into believing that it represents ISO, has been approved or authorized to act on behalf of ISO, or is otherwise associated with ISO. This false or misleading impression of association with the Complainant enables the Respondent to unfairly use the Claimant’s trademark to produce a commercial benefit for itself.

In addition, the Complainant indicates that “the domain name directs viewers to the web site at “www.qs-iso9000.com”, which refers to “the ISO/TS/AS 9000 and 14000 Management System services” as the services being provided by the Respondent as per copy of the printout of the web pages provided to the Panel. The Respondent further claims to have “qualified, diverse consulting staff that will help [its customers] … develop a comprehensive plan toward implementing ISO/QS-9000.”. In view of the Complainant, all these representations and references to the various ISO standards add to the impression that the Respondent’s web site is an ISO approved or authorized site, or otherwise associated with ISO and therefore the Complainant infers that the Respondent has taken unfair and improper advantage of ISO’s trademark.

The Complainant has not licensed or otherwise authorized the Respondent to use its ISO trademark for any purpose. The Complainant has registered its ISO trademark not only in the United States but in many other countries internationally since 1970. In addition, the WIPO Convention, the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) provide international protection for the rights of trademark owners. These treaties also provide crucial protection for “well-known” trademarks and service marks even in countries where the mark is unregistered. The ISO mark is a “well-known” mark within its field of speciality and is therefore entitled to this heightened level of protection internationally.

With reference to the issue of the rights or legitimate interest of the Respondent, the Complainant informs the Panel that according to the outcome of some trademark searched conducted, the Respondent has not registered any marks in relation to the ISO name. Furthermore, to the best of Complainant’s knowledge, Respondent has not made any legitimate non-commercial or fair use of the domain names. According to the Complainant ISO is not a name that would normally be used or has any bearing on the Respondent’s activities, unless Respondent is seeking to create an impression of association with the Complainant, or to unfairly use the Complainant’s trademark to produce a commercial benefit for themselves. According to the Complainant, the very fact that the Respondent chose to use “ISO” as a key component in its domain name, email address, trading name and logo, while providing services in the same field of the Complainant’s activities, is evidence of the Complainant’s well-known status internationally, as well as evidence that the Respondent specifically targeted the well-known ISO mark and the Complainant’s reputation when it chose its domain name, email address, trading name and logo.

The Complainant makes reference to the Respondent’s letter of February 26, 2004, enclosed in the Complaint addressing the issue of the registration of the corporation name International ISO Group since 1993, with the state of Ohio, USA, and that “qs-iso” is not a “copyrighted” name of the Complainant. The Complainant underlines that the Respondent’s assertions in its “correspondence are confusing and in many respects incoherent. The copyright claim is confused and should be considered irrelevant. Furthermore, the registration of a company name with a state authority for business purposes does not provide for any trademark protection (or create intellectual property rights on behalf of the Respondent), nor does it provide Respondent with any right to infringe the Complainant’s trademark”. In view of the Complainant, “such an unwarranted registration certainly does not grant the Respondent a right to register and use a domain name that is confusingly similar to the Complainant’s trademark, and to trade-off on the name and reputation of ISO”.

With reference to the bad faith issue, the Complainant indicates that the services offered by the Respondent are expressly stated on the Respondent’s web site to relate to the Complainant’s ISO 9000, 9001 and 14001 standards commenting that these statements indicate the Respondent’s attempts to create an association with ISO or suggest that its products are endorsed by the Complainant. Furthermore, the Respondent attempts to create a misleading or false impression of association with ISO by using <qs-iso9000.com> as part of its business e-mail address.

The Complainant concludes that given the references to the Complainant on the Respondent’s web sites, it is clear that the Respondent, who is active precisely in the same field as the Complainant (i.e., the field of quality standards), registered the Domain Name with knowledge of Complainant’s reputation and function in this area and the use of the number “9000” in conjunction with the ISO name strongly indicates that the Respondent was aware of the Complainant, its well-known mark and function at the time of registration, and that the Respondent was deliberately and unjustifiably attempting to take unfair advantage of, and to trade-off on the name and reputation of ISO.

B. Respondent

Respondent has not contested the allegations of the Complainant filing a formal Response but has provided the Center on June 29, 2004, a copy of letter dated February 26, 2004, addressed to the Complainant, with the indication to consider it as the Response.

The Respondent, replying in a communication to a cease and desist letter of the Complainant, indicates that it is in agreement with the Complainant’s assertion that the name ISO represents the International Standards Organization and within the context of international standardization, ISO is the short name of International Standards Organization. Conversely, the Respondent does not agree that there is any right, reason or logic to extend this assertion to “related activities (such as consultancy, training, or conformity assessment) asserting that “under US law”, the Complainant “would have no standing for that claim”.

The Respondent denies that there is any intent to confuse nor to take advantage from any confusion; the potential conflict and the possible confusion amongst the two organizations “is theoretical and not in any sense real”.

The Respondent makes reference to the fact that the business name International ISO Group, Inc was duly investigated by the Secretary of the state of Ohio to determine if there was any conflict against other business entities and since the company was incorporated with that name, the Respondent deduces that there was no such conflict.

The Respondent states that use of ISO is intended to and clearly does refer to the entire group of management system standards including ISO 9000, QS 9000, AS 9100, TE 9000, CE 9000 and MS 9000 and comments that people “commonly refer to these standards by the actual standard names without any reference to the copyright holders of these names to indicate the generic category of standards based systems, training and requirements. The Respondent thus comments that the Complainant’s “ very success has reduced” the Complainant’s “ability to require acknowledgement for” the “name because it has become in actual practice, a generic term”.

The Respondent furthermore asserts, with reference to the domain name, that “no matter how it is composed, it is not subject to copyright or trademark within the US. The name is not subject to Trademark within the USA because it is generic per US trademark law 1209.01 for trade-marking domain names”.

With reference to the UDRP cases deciding the transfer of other domain names to the Complainant, the Respondent assesses that the present case is different since in the other “ISO” was isolated while qs-iso “is not a misuse of “ the Complainant’s “name”.

The Respondent informs the Panel that since it started working with systems that used or referred to ISO standards in 1988, and since 1993, it has become a significant portion of the business. Despite the significant amount of calls received during the years estimated at around 40.000, the Respondent notes that there was only one case of a confused customer.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a 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.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

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

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

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

6.1. Domain Name Identical or Confusingly Similar

The Complainant has provided the Panel with a list of over 100 trademark registration for ISO in different countries and some copies of registration certificates, including the one for the trademark registration in N. 909170 in class 16, first filed on August 7, 1970, and registered on March 2, 1971, in the Unites States.

The Panel concurs with the views expressed in the case International Organization for Standardization, ISO v. Glenn Kohner, Creative Intelligence Consulting and ISO-Online, WIPO Case No. D2003-0565 deciding “although not identical, the disputed domain names are confusingly similar to the Complainant’s mark … the additional suffixes ‘9’, ‘14’, ‘17,’ ‘wizard’ and ‘ninethousand’ … do not remove the scope for confusion with the Complainant’s ISO mark” as they were “abbreviations of the Complainant’s certification standards and when used as suffixes, evoke the nature of the Complainant’s business.”

Along the same lines, the Panel in the case International Organization for Standardization v Root Research, Inc,. WIPO Case No. D2001-1194 declared that the domain name, <iso-qa.com>, links “ISO” and “qa”, which represents the “quality assurance” testing which is closely associated with the Complainant’s standards compliance assessments. The combination of “ISO”, an internationally recognised trademark, and “standards” or “qa” makes the domain names confusingly similar to the ISO trademark”.

The Panel finds that the same conclusion can be applied to the domain name <qs-iso9000.com> since in the present case the same suffix “ninethousand” is as well quoted in the domain name – simply indicated in numbers - and the addition of the prefix “qs”, common abbreviation of Quality Standards, is not sufficient to exclude the confusingly similarity amongst the trademark ISO and the domain name.

The facts relating to this first issue are also similar to the facts in the cases in which the acronym for the organization or company concerned was coupled with another term such as The Professional Golfers’ Association of America v. Domainanalyst.Com et al, WIPO Case No. D2000-1469 where the Panel found the use of the “PGA” acronym with OPEN to be blatantly confusingly similar to the PGA trademark.

In view of the above, the Panel finds that the Complainant has proved that the domain name is confusingly similar to the trademarks of the Complainant according to paragraph 4(a)(i) of the Policy.

6.2. Rights and Legitimate Interest

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:

(a) that he has made 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 prior to the dispute;

(b) that he is commonly known by the domain name, even if he has not acquired any trademark rights; or

(c) that he intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

The Panel finds that, in absence of any convincing explanation of the Respondent, it is not to be considered a sufficient evidence of a legitimate interest the mere adoption of International ISO Group, Inc as company name for the Respondent, since it is confusingly similar to the Name of the Complainant and to the well-know trademark ISO.

Also in International Organization for Standardization v. Root Research, Inc., WIPO Case No. D2001-1194 the domain names were being used by the Respondent to sell its products and services, and it was decided that the Respondent did not have a legitimate interest in the domain names in question as they “create the impression of an association with the ISO and misappropriate the reputation of the ISO mark for the Respondent’s commercial advantage.”

In International Organization for Standardization v. International Supplier Operations Audit Services, WIPO Case No. D2002-0460 the Panel commented that “as one would expect from someone engaged in the field of quality standards, the Respondent has at all material times been well aware of the Complainant’s mark”. The Panel went on to rule that “the Respondent’s use of an incomplete acronym to identify its business under the (a) ISO Quality.com name, (b) its trading name and (c) on all pages of the website to which all the Domain Names are connected, is not a fair use of the Complainant’s mark.” In this case, the Panel also found no “fair use of the Domain Names, which … are likely to be taken by a substantial number of people as names of the Complainant.”

Furthermore, there is no relation, disclosed to the Panel, between the Respondent and the Complainant and Respondent is not a licensee of the Complainant, nor the Respondent has otherwise obtained an authorization to use Complainant’s trademark and name under any circumstance.

The Panel therefore finds that Respondent has no rights or legitimate interests in respect of the domain name, according to paragraph 4(a)(ii) of the Policy.

6.3. Registration and Use in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith:

(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’ s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on the holder’s website or location.

With reference to the registration in bad faith, the Panel notes that in view of the Complainant’s well-known trademarks, in light of the activities that the Respondent has declared been engaged in since 1988, and also of the statements contained in the letter of February 26, 2004, it is very likely that the Respondent was well aware of ISO trademarks also at the time of registration of the domain name. In Barnes & Noble College Bookstores, Inc. v. Leisure Interactive, WIPO Case No. D2001-1216, the Panel concluded, “it is more probable than not that Respondent in registering the disputed domain name, was motivated by a desire to benefit from the widespread reputation of the BARNES & NOBLE marks” and also in Guerlain S.A. v. PeiKang, WIPO Case No. D2000-0028 and Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809.

Also in International Organization for Standardization v. International Supplier Operations Audit Services WIPO Case No. D2002-0460 the Panel found that the domain names in dispute were registered and being used by the Respondent in bad faith, since “the Respondent deliberately and unjustifiably selected the Domain Names with a view to associating itself and/or services with the Complainant … in the hope that it would attract internet users to its website for commercial gain.”

In the case of World Wrestling Federation Entertainment, Inc. v. Aaron Rift, WIPO Case No. D2000-1499, the Panel found in favour of the Complainant where the Respondent deliberately selected the Complainant’s mark as part of his domain name rather than choosing a non-infringing alternative stating “that the Respondent registered and used the domain name as an intentional attempt to attract Internet users to his web site for commercial gain based on a likelihood of confusion with the Complainant.”

The Panels reached similar rulings in International Organization for Standardization, ISO v. Glenn Kohner, Creative Intelligence Consulting and ISO-Online, WIPO Case No. D2003-0565 and International Organization for Standardization v. James Holroyd of Eon Solutions Ltd, a.k.a. NA and I see O, WIPO Case No. D2003-0739. The Panels in both cases found that “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 its has done the Complainant’s trademark in the disputed domain names,” and 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.”

The Panel herein finds the paragraph (iv) of the Policy applicable in the instant case since the Respondent was well aware of the Complainant’s mark at all times and is attempting to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation and endorsement of Respondent’s services.

As an additional element evidencing bad faith, the Panel notes that the Respondents has adopted and is using on the home page of the web site as well as on the letter headed paper, a logo which is confusingly similar to the ISO trademark as contains some of the figurative element - like round shape of the sign and the representation of the stylized globe - which were adopted in the ISO registered trademark since 1970.

In view of the above, the Panel finds that Respondent has registered and is using the domain name in bad faith, according to paragraph 4(a)(iii) of the Policy.

7. Decision

In light of the foregoing, the Panel decides that (a) the domain name registered by the Respondent is confusingly similar to the Complainant’s trademarks, that (b) the Respondent has no rights or legitimate interests in respect of the domain name and (c) that the domain name has been registered and used in bad faith.

Accordingly, the Panel requires that the registration of the domain name <qs-iso9000.com> be transferred to the Complainant.

Luca Barbero
Sole Panelist

Dated: July 16, 2004