International Organization for Standardization ISO v. Transure Enterprise Ltd, Host Master
Case No. D2008-1184
1. The Parties
Complainant is International Organization for Standardization ISO, Geneva, Switzerland.
Respondent is Transure Enterprise Ltd, Tortola, Virgin Islands, Overseas territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name, <iso-org.com>, is registered with Above.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 4, 2008. On August 5, 2008, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the domain name at issue. On August 6, 2008, Above.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. 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 Respondent of the Complaint, and the proceedings commenced on August 11, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 31, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 1, 2008.
The Center appointed M. Scott Donahey as the sole panelist in this matter on September 4, 2008. 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
Complainant is the owner of registered trademarks for the mark ISO in more than 100 countries, dating back to March 25, 1953. Complaint, Annex 2. Complainant was established in 1947 as a non-profit, non-governmental federation of national standards bodies. Complainant has members in 157 countries. Complaint, Annex 3. Complainant promotes the development of standardization in order to facilitate international exchange of goods and services. Approximately 570 international organizations have liaison status with Complainant, including all United Nations specialized agencies working in similar fields. Complainant is the source of the well-known ISO 9000 series of standards and the ISO 14000 series of standards.
Respondent registered the domain name at issue on June 30, 2008. Complaint, Annex 1. Complainant send Respondent a cease and desist letter on July 14, 2008. Respondent was at that time using the domain name at issue to resolve to a web site with miscellaneous links to a variety of other web sites and an offer to sell the domain name at issue. Complaint, Annex 8. Following receipt of the cease and desist letter, Respondent modified the web site to eliminate the offer for sale. Complaint, Annex 9.
Complainant performed a trademark search in the United Kingdom of Great Britain and Northern Ireland, Community Trade Mark (CTM) and Romarin databases, which yielded no records of trademark rights in Respondent. Complainant has not licensed nor otherwise authorized Respondent to use its mark.
Respondent has registered over 80,000 domain names and has been a respondent in at least three previous domain name disputes.
5. Parties’ Contentions
A. Complainant
Complainant contends that the domain name at issue is confusingly similar to Complainant’s ISO mark, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.
B. Respondent
Respondent did not file a Response or otherwise reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
2) that the respondent has no rights or legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The domain name at issue consists of Complainant’s ISO mark plus a hyphen and the abbreviation “org.” The addition of the descriptive abbreviation for “organization” reinforces the association with Complainant, and its addition does not defeat the confusing similarity to Complainant’s ISO mark. International Organization for Standardization ISO v. ISO Easy,
WIPO Case No. D2005-0984 (<isoeasy.com>, et al.). Accordingly the Panel finds that the domain name at issue is confusingly similar to Complainant’s ISO mark.
B. Rights or Legitimate Interests
The consensus view of WIPO panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
In the present case Complainant alleges that Respondent has no rights or legitimate interests in respect of the domain name, nor has Complainant granted Respondent a license, permission, or authorization to use its registered ISO trademark. Respondent has not filed a Response, and as such has failed to respond to Complainant’s assertions. Moreoever, Respondent has not presented the Panel with any evidence of rights or legitimate interests in the domain name, Policy paragraph 4(c). Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name at issue.
C. Registered and Used in Bad Faith
Respondent registered the domain name at issue long after Complainant had registered its ISO mark and after the mark had been registered and become well-known in numerous countries around the world. In such a case, it can be said that Respondent had constructive notice of Complainant’s trademark rights. Nike, Inc. v. Asumano Travel,
WIPO Case No. D2000-1598.
Moreover, Respondent is attempting to use the domain name at issue to realize remuneration based on the confusing similarity with Complainant’s trademark. As stated in F. Hoffmann-La Roche AG v. Transure Enterprise Ltd.,
WIPO Case No. D2008-0422:
The Respondent’s website associated with the disputed domain name only contains sponsored advertising links and does not offer goods or services for sale. In addition, when consumers connect to the website a number of additional advertisements open up in separate web pages. It is clear that the Respondent is using the disputed domain name to direct traffic to a website where the Respondent obtains commercial gain through sponsored listing. As the panel found in Digital Spy Limited v. Moniker Privacy Services and Express Corporation, WIPO Case No. D2007-0160, “Registering a domain name with knowledge of another company’s rights in the name, and with intention to divert traffic, is evidence of bad faith.
Accordingly, the Panel finds that Respondent has registered and is using the domain name at issue 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 name <iso-org.com> be transferred to Complainant.
M. Scott Donahey Sole Panelist
Dated: September 18, 2008
Stay updated! Get new cases and decisions by daily email.
