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International Organization for Standardization ISO v. ISO Easy [2005] GENDND 1964 (8 November 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

International Organization for Standardization ISO v. ISO Easy

Case No. D2005-0984

1. The Parties

The Complainant is International Organization for Standardization ISO, Genève, Switzerland, represented by José M. Checa, Switzerland.

The Respondent is ISO Easy, Beaumont Leland, New Jersey United States of America, represented by Leland R. Beaumont.

2. The Domain Names and Registrars

The disputed domain names <isoeasy.com> and <isoeasy.org> are registered with Go Daddy Software.

The disputed domain name <isoeasy.info> is registered with Register.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 14, 2005. On September 14, 2005, the Center transmitted by email to Go Daddy Software and Register.com a request for registrar verification in connection with the domain names at issue. On September 15, 2005, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of <isoeasy.com> and <isoeasy.org> and providing the contact details for the administrative, billing, and technical contact. On September 15, 2005, Register.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of <isoeasy.info> 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 September 23, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 13, 2005. The Response was filed with the Center on October 13, 2005.

The Center appointed Nasser A. Khasawneh as the sole panelist in this matter on October 25, 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.

4. Factual Background

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, including the United States of America.

The Respondent first registered the disputed domain names on January 22, 1999, (<isoeasy.org>), October 15, 2001, (<isoeasy.info>), and December 9, 2001, (<isoeasy.com>).

5. Parties’ Contentions

A. Complainant

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 March 2, 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 word “easy” is insufficient to remove the likelihood of consumer deception. The word “easy” is a generic reference that does not convey any information that would indicate that the websites are owned by third parties unrelated to ISO. Many precedents 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 D2001-0275 <mtvmp3.com>, D2001-0428 <3mcare.com> and D2001-1231 <bmwbikes.com> et al.).”

- The same question as the one in this case “has already been decided in WIPO Case No. D2003-0565 <iso-online.com> et al. “

- “The domain names engender an overall impression of a website sponsored by 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.”

- “As evidenced by the correspondence exchanged with Respondent, it asserted no rights in the words “isoeasy” and renamed its business as “Simply Quality” without difficulty. However, the contested domain names are still hosting Respondent’s business and Respondent has not accepted their transfer to Complainant.”

- “Any awareness by the public of the Respondent based on the use of the domain name 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.”

- “From the information posted on the websites, Respondent is clearly undertaking a commercial activity aimed at obtaining profits by providing diverse publications, training services and linkage to other sites with commercial products related to standards. Accordingly, Respondent cannot assert any defense based on UDRP Par. 4(c)(iii).”

- “Respondent cannot be said to be making a “bona fide offering of goods or services prior to any notice of the dispute” under UDRP Par. 4(c)(i), since Respondent knew at all times that ISO was a protected trademark. As stated in a number of WIPO precedents, a deliberately infringing use should not be considered bona fide use.

- “Respondent is not a licensee or is otherwise associated to Complainant. Respondent has never been authorized, but to the contrary, it was urged to discontinue use of its domain names on several occasions.”

- The Complainant cites previous WIPO Decisions in other similar cases instigated by the Complainant. For example, the Complainant cites In International Organization for Standardization v. Root Research, Inc., WIPO Case No. D2001-1194.

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,” and it was clear that the Respondent knew of the “Complainant and its activities when he registered the domain names.”

- The Respondent’s conduct fits squarely within UDRP Par 4(b)(iv). The 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.”

- The disclaimer printed by the Respondent on its site should not influence the Panel in finding bad faith, according to the Complainant for a number of reasons: “1) the disclaimer was included after Complainant sent a cease and desist communication to Respondent; 2) Customers and consumers initially seeking Complainant end up in Respondent’s website before having any possibility of reading the disclaimer; and 3) the disclaimer is, moreover, a little footnote at the bottom of the page (clearly aimed at defeating its purpose) and not, as it would be expected, a clear and visible note in a privileged part of the site. In any case, in accordance with well-established UDRP precedents, the effects of a disclaimer are very limited.”

- As for the disputed domain name <isoeasy.info>, Complainant states that it is currently parked with the Registrar (Register.com) with the message “COMING SOON!”. The Complainant claims that “the fact that the domain name is currently not in use (although it is expected to be in use shortly as per the message displayed in the website) does not dispose the question of the “use of the domain in bad faith”. Taking into account Respondent’s actions in connection with the other two domain names, the well-known character of Complainant’s mark and its worldwide reputation, Respondent’s disregard of Complainant’s cease and desist communication and the impossibility to conceive any legitimate active use of the website are circumstances that amount to passive holding of the domain name.”

B. Respondent

The Respondent presents a number of arguments in response to the Complainant’s contentions. These arguments include (quotations used when quoting directly from the Response):

The disputed domain names are not confusingly similar to the ISO trademark. The Respondent’s main arguments in this regard include:

- The Respondent had taken “many steps to differentiate” his organization from that of the Complainant. “The name “isoeasy” is distinct from “ISO”. The letters “iso” form an English language prefix. But, Respondent claims, in his disputed domain names the letters “iso” are not displayed as a prefix and “are not emphasized through use of a hyphen or other delimiting mark. Even if the name is separated and read in two parts, the remaining portion of the name, “easy” is not an attribute associated with the International Organization for Standardization.”

- The Respondent highlights the fact that his sites contain a prominent disclaimer stating: “ISO is a registered trademark of the International Organization for Standardization, with which we are not affiliated”.

- The Respondent presents various arguments distinguishing his case from other cases in which the WIPO Decision went in favour of the Complainant.

The Respondent has rights and legitimate interests in the disputed domain names for several reasons including:

- The Respondent has been doing business as “ISO Easy” from 1992 until the International Organization for Standardization requested that it stops.

- Before choosing the ISO Easy name, the Respondent had searched relevant trademark databases for the name “isoeasy” and “iso easy” and found no conflicts.

- The Respondent had registered the business name “Iso Easy” in Monmouth County, NJ, USA in October 1992. He stopped using the name promptly after receiving notification from the International Organization for Standardization, when he notified the Complainant that he changed the name of his business to “Simply Quality”.

The Respondent had never had bad faith or ill-will towards the Complainant. His arguments under this third test of the Policy include:

- The relationship between the Complainant and Respondent is “symbiotic and not parasitic” The Respondent respects the work of the Complainant and consistently sends that message to visitors of his website. He has employed various means to distinguish himself from the Complainant. For example, he has used disclaimers.

- The name “ISO Easy” has been used by the Respondent since 1992 and he “dropped it” as soon as he was notified by the Complainant. The name was changed to “Simply Quality.”

- The Respondent used disclaimers on his site. The Respondent states that his disclaimers are “accurate, sincere, and not intended in any way to be misleading” and he is “open to suggestions for improving the clarity of their content. The Complainant has never provided any such suggestions.”

- The Respondent denies strongly that he has done anything to give the impression of affiliation between himself and the Complainant.

- As for “isoeasy.info”, the Respondent states that he is willing to release it.

- The Respondent emphasizes his proposal to solve the matter in a fair way (this proposal was also made in an email from the Respondent to the WIPO Centre, dated September 29, 2005). He summarizes his proposal as follows:

- “I release the domain name “isoeasy.info” and

- My use of the domain names “isoeasy.org” and “isoeasy.com” be allowed to continue indefinitely with the restriction that they map (translate to, point to, are a synonym for) only to the Internet web page at http://www.simplyquality.org/moved.htm”

6. Discussion and Findings

A. Identical or Confusingly Similar

It is indisputable 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 one other word, “easy,” that does not affect the distinctiveness of the mark. It is the view of this Panel that the addition of generic words such as “easy” does not alter the fact that the Respondent is copying a mark identical to that of the Complainant.

The Panel considered the counter arguments of the Respondent in this regard but found them unconvincing. First of all, the Panel rejects the arguments of the Respondent regarding the letters “iso” and their uses as a prefix, different dictionary meanings … etc. The Respondent is actually associating himself with the ISO business of the Complainant. He even claims that their relationship is “symbiotic.” Therefore, the reference to “iso” in the disputed domain names is inextricably linked to the business of the Complainant.

As for the use of the word “easy,” the Respondent strongly argues that this word is entirely unrelated to the business of the Complainant, and that it is different from the words used with the Complainant’s mark in other WIPO Cases (in which the Complainant prevailed). The Panel does not share the Respondent’s view in this regard. The word “easy” when used with the “ISO” implies a facilitating relationship with the business of the Complainant. In a sense, the first reaction to the phrase “isoeasy” is very likely to be something on the lines of “ISO made easy” or “make ISO easy for you” … etc. It has a marketing edge to it. Consumers are highly likely to believe that a site carrying the domain name “isoeasy” is a site that provides tools and assistance in relation to the business of the Complainant. The Panel does not agree with the Respondent that the word “easy” is so different from words such as “audit,” “consultant” and “standards” (which were the subject of previous WIPO Cases). The latter words link directly to the business of the Complainant by clearly suggesting a particular service in relation to the ISO system. The same applies to the case at hand.

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. As alluded to above, 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.net>. 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 holds true 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

The essential issue under the second test of the Policy in this case is authorization from the Complainant or lack thereof. It is a fact in this case that the Respondent is consciously and knowingly referring to the trademark of the Complainant in the disputed domain names. When the Panel visited the websites associated with the disputed domain names <isoeasy.com> and <isoeasy.org> , the sites were marketing the Respondent’s business of providing consultancy and other services regarding ISO products. The consultancy services of the Respondent were described as follows:

“Let us help you design, develop, document, and deploy your ISO 9001 conformant quality management system. Services include any of the following activities:

- Design and documentation of a quality management system optimized to your organization,

- Transition of your quality management system from ISO 9001:1994 to ISO 9001:2000,

- Quality manual review or preparation,

- Quality management system assessments, including internal quality audits,

- Process design or review,

- Procedure writing or review,

- Training in the requirements of ISO 9001,

- Planning your conformance efforts,

- Choosing a registration agency.

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. Given that the sites of two of the disputed domain names are entirely based on the Complainant and its ISO system, the Respondent must have known, that such a use of the ISO mark required authorization from the Complainant. Furthermore, when the Complainant warned the Respondent in relation to the use of its mark (in a letter dated July 14, 2004), the Respondent responded by changing the name of its business to Simply Quality, but he maintained his ownership of the disputed domain names and the sites thereof. 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.

All of the above arguments also apply to the disputed domain name <isoeasy.info>. The latter domain name does not seem to be used by the Respondent at present. But, given that the Respondent has been using the two other disputed domain names for business associated with that of the Complainant, the same arguments apply to <isoeasy.info>. The Respondnet must have registered and held this disputed domain name for purposes similar to the other two, and he must have known that this domain name registration also needed authorization from the Complainant.

Consequently, the Panel finds for the Complainant on the second element of the Policy.

A. Registered and Used in Bad Faith

At the outset, the Panel considered the issue of the disclaimers on the sites of the disputed domain names <isoeasy.com> and <isoeasy.org>. In reviewing this matter, the Panel was guided by the general principles developed in previous WIPO Cases. The Panel particularly considered the consensus view on the issue of disclaimers, as summarized in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions. This summary reads as follows: “The existence of a disclaimer cannot cure bad faith, when bad faith has been established by other factors. A disclaimer can also show that the respondent had prior knowledge of the complainant’s trademark. However a disclaimer is sometimes found to support other factors indicating good faith or legitimate interest.”

When it comes to the case at hand, the Panel finds that the main disclaimer on the sites of the disputed domain names established beyond doubt the Respondent’s knowledge of the Complainant’s trademark. The disclaimer in question reads as follows: “ISO is a registered trademark of the International Organization for Standardization, with which we are not affiliated.” The Respondent is confirming that ISO is a trademark of the Complainant, and this factor must be seen in light of the other elements highlighted below which point towards bad faith. If the Respondent is expressly aware of the existence of the Complainant’s trademark, is it conceivable that he ignored in good faith the need to secure authorization / licence from the Complainant? The Panel does not think it is.

Also, this disclaimer (which is the more significant one) is written at the very bottom of the first page of the sites in question. A visitor to these sites would only see it after going through all the language about ISO and how the Respondent can help in this regard by providing various consultancy and other services. Giving such low profile to such a significant disclaimer only serves to belittle its importance in considering the third test of the Policy.

As for the other disclaimer, which is placed more prominently on the site (a link to it is provided at the top of the front page of these sites), it reads as follows:

“The information in these Web pages is designed to provide accurate and authoritative information regarding interpretation of the ISO 9001 Standard. It is made available free of charge with the understanding that neither the author nor the service provider is engaged in rendering legal, accounting, or other professional service. If legal advice or other expert assistance is required, the services of a competent professional person should be sought. If your organization is seeking registration for compliance with the ISO 9001 Standard, contact an accredited registration agency.”

This disclaimer only serves to protect the liability of the Respondent in relation to the services it provides. It does not unequivocally state that the Respondent has nothing to do with the Complainant and is not particularly authorized to represent it in relation to its ISO marks. Such an implication may be drawn by some readers but, in light of the bigger picture, it does not sway this Panel in its findings on the element of bad faith registration and use.

Secondly, in considering the third element of the policy, the Panel considered the attitude of the Respondent since he was warned by the Complainant in July 2004. On the one hand, it is positive to see the speed with which the Respondent changed the name of his business from “ISO Easy” to “Simply Quality.” However, it is incomprehensible why the Respondent would change the name of the business but not the name of the domain names. In his Response, the Respondent proposes a solution that basically would allow him to keep the disputed domain names indefinitely and benefit from the link with the ISO mark. The Panel finds these positions incompatible. It seems the Respondent wants to collaborate on one level (i.e. in terms of business name) while maintain to the maximum extent the benefit deriving from the ISO-based domain names. This conduct, is more indicative of bad faith than good faith. If the Respondent accepts the demands of the Complainant and decides to act accordingly, then the most significant collaboration would be to cease and desist from using the disputed domain names.

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. 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), 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.

The third disputed domain name <isoeasy.info> is presently not in use. When the Panel tried to access the site, it got an error page. This is a case of passive holding which the Panel finds to be in bad faith in light of the overall facts and the above mentioned conclusions .

For all the above reasons, the Panel finds that the Respondent registered and is using 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 <isoeasy.com>, <isoeasy.org>, <isoeasy.info> be transferred to the Complainant.

Nasser A. Khasawneh
Sole Panelist

Date: November 8, 2005