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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

International Organization for Standardization ISO v. Capaccio Environmental Engineering, Inc.

Case No. D2006-1190

 

1. The Parties

The Complainant is International Organization for Standardization ISO, of Geneva, Switzerland, represented by an internal representative.

The Respondent is Capaccio Environmental Engineering, Inc., of Marlborough, Massachusetts, United States of America, represented by an internal representative.

 

2. The Domain Name and Registrar

The disputed domain name <iso14000.com> is registered with Network Solutions, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 15, 2006. On September 15, 2006, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On September 18, 2006, 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 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 21, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 12, 2006. The Response was filed with the Center on October 5, 2006.

A supplemental filing was submitted by the Complainant to the Center on October 19, 2006, and by the Respondent on October 23, 2006. Receipt of both supplemental filings was acknowledged by the Center on October 23, 2006.

The Center appointed Warwick A Rothnie as the sole panelist in this matter on November 9, 2006. 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

According to the Complaint, the Complainant was established in 1947. It is a non-profit, non-governmental organization being a worldwide federation of national standards bodies. Each member body of the Complainant is the national body “most representative of standardization in its country” and each member body shares responsibility for protecting the interests of the Complainant within its jurisdiction.

The objective of the Complainant 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 results of the Complainant’s technical work are published as International Standards. The scope of the Complainant’s activities covers standardization in all fields except electrical and electronic engineering standards. The Complainant’s work on the development of international standards is carried out through 2,952 technical bodies. More than 30,000 experts from all parts of the world participate each year in the Complainant technical work which, to date, has resulted in the publication of more than 15 000 ISO standards.

Amongst other things, the Complainant’s standard ISO 3166 forms the basis of the two-letter country designations used in the Internet domain name system. The two most widely known standards are the Complainant’s ISO 9000 and ISO 14000 standards which the Complaint states have been implemented by some 887 770 organizations in 161 countries.

The ISO 14000 “family” is primarily concerned with “environmental management”. By the end of December 2005, the Complaint claims that 111,162 ISO 14001 certificates (1996 and 2004 versions consolidated) had been issued in 138 countries and economies; up 24% from 2004.

The Complainant registered the trademark ISO in Switzerland on March 25, 1953, No. 146257. The goods or services are not stated. The ISO trademark was registered internationally, presumably under the Madrid Treaty (although this is not stated), on May 29, 1953, No. 169541.

Annex 12 to the Complaint contains a list of over 150 trademark registrations in many countries around the world owned by the Complainant. The Complaint does not specifically identify the mark or marks the subject of the registrations, other than to refer to it as the “ISO” trademark. Annex 12 itself features a combined word and device mark for ISO on a background of a globe within a diamond border. This appears to be the trademark registered in at least some of the registrations included in Annex 12.

The Respondent states that it purchased the domain name in 1998 from a previous owner who set it up in 1995. The whois record included as Annex 1 to the Complaint confirms that the domain name was created on March 30, 1998. The Respondent has secured a State service mark registration, No. 57019, in the Commonwealth of Massachusetts in March 1999 for “www.iso14000.com” in respect of Engineering and Consulting Services.

The Respondent claims it has been using the domain name and its State service mark continuously since 1998.

The domain name resolves to a website entitled in the header “ISO 14000 Information Center” and described in a headline banner “ISO14000.com – Your ISO 14000 Information Center”. Amongst other things, the website includes links to “ISO 14000 – Implementation Training”, “Hot Topics” such as “FAQ – Are there any significant changes in the ISO 14001:2004 Revision?”, “ISO 14000 – Awareness Training”, “ISO 14000 – Auditor Training” and an “In the News …” section which has links to environment and ISO related matters.

The website includes a disclaimer at the foot of the page in the following terms:

Important Note to Users of this Site: Although it is intended to be a useful information resource for those seeking to implement and maintain effective environmental management systems, the ISO 14001 Info Center Web Site (www.iso14000.com) is not affiliated with and does not act on behalf of the International Organization for Standardization (ISO), which is the organization that develops and issues international standards, including the ISO 14001 standard. The URL of the official website for ISO is located at “www.iso.org”.

On August 6, 2004, the Complainant wrote to the Respondent demanding it cease using the domain name. The Respondent replied on August 23, 2004, stating that the site was used to provide links to websites, resources, related organization, and online discussion of information pertaining to the ISO 14001 Environmental Management Systems standards. The letter also offered to post additional disclaimers if further clarification was required.

On September 6, 2004, the Complainant emailed back stating that its policy does not permit any company to use the name “ISO” in domain names, names of websites, names of products, company names etc. It offered the Respondent a transition period to July 1, 2005, to shift to a new domain name.

The Complainant re-initiated its demands on August 18, 2006, after what the Complaint describes as “a prudent period of time”.

 

5. Discussion and Findings

Under paragraph 4(a) of the Policy the Complainant has the burden of proof in respect of the following three elements:

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

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

The Panel deals with each of these elements in turn.

A. Identical or Confusingly Similar

There are two parts to this inquiry: does the Complainant have trademark rights and, if so, is the disputed domain name identical or confusingly similar to it?

The Complainant claims that the disputed domain name is identical or confusingly similar to the worldwide-registered “ISO” trademarks, including US federal trademark No. 0909170. US trademark No. 0909170 is for ISO superimposed on a globe device.

The Panel finds that the Complainant has proved ownership at least of this ISO trade mark and those referred to in section 4 above.

The question of resemblance for the purposes of the Policy requires a comparison of the disputed domain name to the trademark rights which have been proved. This is a different test to that involved in trademark law where questions of the goods or services covered by the trademark rights can be relevant to the likelihood of confusion: see for example Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin, WIPO Case No. D2002-0420. The question of the scope of the Complainant’s trademark rights may of course be relevant to the issues under paragraphs 4(a)(ii) and 4(a)(iii).

The Complainant contends that the dominant and distinctive component of the disputed domain name is “ISO”, which is identical to Complainant’s registered trademark. The additional element of the disputed domain name i.e. the number (14000) of a well-known “family” of International Standards, only reinforces the association with the International Organization for Standardization ISO, as it is a reference to one of its main “products”. The Complainant invokes support from International Organization for Standardization (ISO) v. International ISO Group, Inc., WIPO Case No. D2004-0376.

The Panel has little doubt that the conjunction of ISO and 14000 will be taken by many as indicating some sort of association or connection with the Complainant’s ISO 14000 standard and, accordingly, finds that the domain name is confusingly similar to the Complainant’s ISO trademark.

B. Rights or Legitimate Interests

The second factor that the Complainant is required to establish is that the Respondent has no rights or legitimate interests in respect of the domain name.

Paragraph 4(c) sets out three examples of rights or legitimate interests for the purposes of the Policy. They are:

“(i) before any notice to you of the dispute, your use of, or demonstrable 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; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

These are not an exhaustive enumeration of rights or legitimate interests, they are examples only.

In view of the difficulty in proving a negative, the Complainant must adduce sufficient material to raise a prima facie case under this factor and then an evidential burden shifts to the Respondent to rebut that prima facie case.

The Complainant states that the Respondent is not a licensee nor otherwise associated with the Complainant. In this connection, the Complainant notes that the Panel in International Organization for Standardization (ISO) v. ISO Easy, WIPO Case No. D2005-0984, held:

“The absence of such a license or authorization from the complainant establishes the absence of legitimate right by the Respondent in the disputed domain name.”

To exclude the operation of paragraph 4(c)(i) of the Policy, the Complainant points to the disclaimer on the Respondent’s website as indicating that the Respondent has adopted the domain name with knowledge of the Complainant’s rights and so constitutes a deliberately infringing use. Based on its searches of the US federal register and Madrid Express, the Complainant also contends that the Respondent does not have any trademark or service marks rights in the domain name and, consequently, the claim of such rights on the Respondent’s website is misleading. In addition, the Complainant notes the sponsorship of the website by the Respondent in promotion of the Respondent’s commercial products and services to exclude the operation of paragraph 4(c)(iii) of the Policy. It also argues that, as the Respondent’s website is aimed at obtaining certification against ISO 14001, it misleads the public. This is because the Complainant’s services do not include certification which is carried out by institutions completely unconnected with the Complainant. The Complainant, it seems, is concerned only with standardization.

The Complainant also invokes a number of prior Panel decisions, in which the Complainant has succeeded, in support of its contentions. In a supplemental filing (the admissibility of which was opposed by the Respondent), the Complainant sought to add to this list the decision in International Organization for Standardisation ISO v Peter Rentschler, WIPO Case No. D2006-1021, decided on October 18, 2006.

The absence of licence or authorisation from the Complainant is an essential requirement in establishing the absence of rights or legitimate interests, however, in itself it is not dispositive. Each of the three examples given in paragraph 4(c) of the Policy, if made out, would operate notwithstanding that the complainant had not authorised the respondent to use the domain name.

This and the other arguments raised by the Complainant do raise a prima facie case, sufficient to make out this requirement unless the Respondent provides suitable justification.

In its Response, however, the Respondent has pointed to its State service mark registration dating from 1999.

The Respondent also states that it has carried out a search of the USPTO trademark database and did not find any registrations for ISO 14000. The Respondent states that it did find a large number of registrations including TUV SUD ISO 9001; ISO 9001: 2000 Regional Quality Management Systems; ISO 9000 Registration; ISO 1400; ISO 14001 Registered AWM; and ISO-CAL 9000.

In its supplemental filing, the Complainant contends that the Respondent’s State service mark should be disregarded. First, according to the Complainant:

“the Commonwealth of Massachusetts does not carry out an examination on absolute or relative grounds for refusal and applications are normally accepted. Therefore, the rights derived from such applications are, to say the least, questionable and cannot be compared with registration in the Principal Register of the USPTO.”

The criticism that the Commonwealth of Massachusetts trademark registration system is a “deposit” system can be made of many national systems, quite possibly including some which have granted rights to the Complainant which it invokes in this dispute. In the absence of a clear showing that the registration is invalid or inconsistent with overriding federal rights, it is not appropriate for this Panel simply to disregard the Respondent’s registration, which has been in existence since 1999. If the validity of the registration is in question, this Panel considers that should more appropriately be pursued within the legal system of Massachusetts and the United States of America particularly having regard to the matters discussed below.

In this connection, the Complainant is not specific about when it first became aware of the Respondent’s activities and, perhaps more significantly, has not sought to explain its delay in initiating the Complaint after challenging the Respondent in August 2004.

Secondly, in its supplemental filing, the Complainant points out that an applicant for a Massachusetts trademark must warrant that no other person has the right to use the trademark in the Commonwealth either in identical form or one so similar as to be likely to deceive.

The Complainant did not draw to the Panel’s attention to International Organization for Standardization v. AQI, WIPO Case No. D2004-0666. Having regard to the terms used and the length of time which had passed since use commenced (12 years), a three member Panel dismissed the Complainant’s challenge to the registration and use of the domain names <iso9000directory.com>, <iso9000conference.com> and <isoinstitute.com>. That three member panel found that the respondent AQI did have rights and legitimate interests in those domain names. It seems from the decision that the respondent did not seek to defend the domain name <iso9000standards.com> although the decision recorded was simply denial of the complaint.

In this case, acknowledging that there are differences, the Panel finds the facts more in accord with International Organization for Standardization v. AQI, WIPO Case No. D2004-0666, than the other decisions, many of which were decided in the absence of a Response, which the Complainant has cited.

The most significant difference between the present case and International Organization for Standardization v. AQI, supra, is that the respondent AQI did not seek to justify <iso9000standards.com>. Here, the Respondent does seek to justify its domain, in part by reference to its State service mark registration and in part by reference to the existence of many other ISO trademark registrations in the US federal register.

From the TESS database, the Panel notes US federal registrations, not in the Complainant’s name, amongst other things for ISO 9001 CERTIFIED AC (No. 2733768), ISO SOLUTIONS INC (No. 2488782), ISO 9000 Registration and device (No. 2952686), ISO 9000:2000 REGISTERED QUALITY MANAGEMENT SYSTEM and device (No. 2981903), ISO 9000 and device (No. 2068572), DEMYSTIFYING ISO 9000 (No. 2018482). In each case the US Patent and Trademark Office required disclaimer of the term ISO 9000.

Like ISO 9000, ISO 14000 is the name of a standard. The domain name is being used by the Respondent, which has a State service mark registration for it, for a website which provides information and services related to that standard. As with ISO 9000, the Panel cannot confidently conclude that the Complainant’s rights in ISO would entitle it in the United States of America or the Commonwealth of Massachusetts to override the Respondent’s particular use of the domain name or its State service mark.

In the circumstances of this case, therefore, the Panel finds that the Respondent has made a sufficient showing of rights or legitimate interests in rebuttal of the Complainant’s claim. Accordingly, the Complainant has not made out this requirement of the Policy.

C. Registered and Used in Bad Faith

In view of the conclusion reached in relation to the second requirement under the Policy, it is not necessary to decide this aspect.

 

7. Decision

For all the foregoing reasons, the Complaint is denied.

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Warwick A Rothnie
Sole Panelist

Dated: November 28, 2006