International Organization for Standardization ISO v. Sunrise Holdings
Case No. D2008-1782
1. The Parties
Complainant is International Organization for Standardization ISO, Genève, Switzerland, internally represented.
Respondent is Sunrise Holdings, British Columbia, Canada, represented by Mr. David Rose, Canada.
2. The Domain Name and Registrar
The disputed domain name <iso.mobi> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2008. On November 19, 2008, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On November 20, 2008, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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” or “UDRP”), 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 November 27, 2008. In accordance with the Rules, paragraph 5(a), the due date for a Response was December 17, 2008. The Response was filed with the Center on November 30, 2008.
The Center appointed Richard G. Lyon as the sole panelist in this matter on December 15, 2008. The Panel finds that it was properly constituted and has jurisdiction to decide this proceeding. The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On December 4, 2008, Complainant filed with the Center a proposed Supplemental Filing, with its request that the Panel accept it. Following its customary practice the Center referred this request to the Panel. On December 16, 2008, at the Panel's request, the Center advised the parties that Complainant's request was denied. The Response contained no information that Complainant could not reasonably have anticipated, and Complainant provided no showing of any other exceptional circumstances justifying a pleading not authorized by the Rules. See Align Technology, Inc v. Web Reg/ Rarenames/ Aligntechnology.Com,
WIPO Case No. D2008-0103.
4. Factual Background
The parties do not dispute the following facts.
Complainant is a world renowned non-profit quasi-governmental organization that is a federation of national standards bodies. Complainant has members in 157 countries and since its establishment in 1947, has published over 17,000 standards and publications. This Complainant identifies many of its standards with ISO; for example, its quality management requirements are known as the ISO 9000 family of standards. Complainant holds registered trademarks for ISO in 146 countries. The oldest of these was registered in 1953. Complainant first registered ISO as a trademark in Canada in 1994.
Complainant acquired the disputed domain name during the sunrise period for the “.mobi” domains in 2006. In mid-2008, however, Complainant's registrar inadvertently failed to give Complainant timely notice of expiry of the disputed domain name, and Complainant's ownership lapsed. Respondent registered the disputed domain name when it became available in July 2008.
Following discovery that it had lost ownership of the disputed domain name, Complainant, with the assistance of its registrar, sought to retrieve the disputed domain name from Respondent. Complainant's registrar contacted Respondent by email on August 26, 2008, explaining the accidental failure to renew and requesting a transfer back to this registrar.1 Complainant first contacted Respondent on September 10, 2008, explained the circumstances under which it had lost ownership of the disputed domain name, and requested a transfer back to Complainant. Respondent refused to transfer, asserting its belief that it was entitled to retain the disputed domain name and that its acquisition when the disputed domain name became publicly available was entirely lawful.
Respondent operates a dating service at the disputed domain name. The format of the dating service is keyed for use by customers using their mobile telephones. The title at the top of the webpage at this site when accessed by the Panel read
“Looking for your soul mate?
ISO.mobi
I seek others.”
This business commenced in late August 2008.
Respondent operates other online businesses at other domain names. Among these is a site at which a list of domain names is offered for sale to the general public and at which Respondent offers services related to creating page rank for views by search engines. There is no allegation that the disputed domain name was ever listed for sale at this website.
5. Parties' Contentions
A. Complainant
Complainant contends as follows:
Complainant has rights in ISO by reason of its registered trademarks for that letter combination around the world and more than half a century of use of that letter combination as its identifier in providing its services relating to standards and standardization. Many panels in Policy proceedings have recognized that Complainant has rights in this letter combination sufficient to invoke the Policy. The disputed domain name, once owned by Complainant, is identical to Complainant's ISO marks except for the generic top-level domain, “.mobi”, which is irrelevant for purposes of paragraph 4(a)(i) of the Policy.
Complainant has never authorized Respondent to use its marks, and prior to its acquisition of the disputed domain name Respondent has never been commonly known by the letter combination ISO. Respondent's use of the disputed domain name for a dating service is commercial, so the safe harbor of paragraph 4(c)(iii) of the Policy is not applicable.
The dating service at the disputed domain name is a “sham” that was “very likely assembled hastily to falsely show a legitimate interest in the [disputed] domain name”. Because Respondent regularly offers domain names for sale at its other website, it is likely that Respondent acquired the disputed domain name with a view toward eventual resale.
The following facts demonstrate that Respondent registered and has been using the disputed domain name in bad faith:
- Respondent registered the disputed domain name years after Complainant registered its ISO mark in Canada. Had Respondent searched the Canadian trademark database, it would have been aware of Complainant's rights, so Respondent was on constructive notice of Complainant's trademark rights.
- An offer to sell the disputed domain name was made on the website “www.namepros.com”. While the disputed domain name was not actually listed, other potential domain names including Complainant's mark were listed and the text immediately following says “buy these and more” (emphasis supplied).
- Offers for sale to the general public have been held to fall within the examples of bad faith quoted in paragraph 4(b)(i) of the Policy.
- Respondent's conduct was “in complete disregard for Complainant's rights” and “the evidence strongly suggests that Respondent was well aware of the potential and popularity of the [disputed] domain name when he registered it and is currently using it with no other intention but to circumvent the [Policy] requirements.”
B. Respondent
Respondent contends as follows:
Respondent's use of the disputed domain name for a dating website does not infringe on Complainant's marks or interfere with Complainant's services in any way. Complainant is not the only company with rights in marks that include the letter combination “iso”. Complainant's trademark rights only extend to the categories of services for which those marks are registered – not dating services.
Respondent registered the disputed domain name because of its brevity and simplicity, and because it was an acronym for “I seek others”, the headline phrase to be used on the dating site. Respondent has registered three other domain names that incorporate “I seek other” or “I seek others” for the same reasons.
The acronym ISO is in wide usage and is not exclusive to Complainant. There is no evidence to suggest that Respondent's holding of the disputed domain name has prevented Complainant from reflecting its trademark in a domain name. Respondent has not attempted to disrupt the business of Complainant and there is no evidence that its ownership of the disputed domain name has done so. Respondent should be able to avail itself of the first come, first served principle for publicly available domain names. Respondent has every right to register a commonly used descriptive phrase, as a domain name, even if that phrase is confusingly similar to the registered mark of a third party.
Respondent has never offered to sell the disputed domain name; indeed its email correspondence with Complainant includes its express refusal to do so. Respondent has never made the disputed domain name available for sale in its other domain business or any other medium. There is no proof that Respondent offered to sell it to Complainant or any third party.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to a mark in which Complainant has rights. As many panels have held, analysis under paragraph 4(a)(i) of the Policy is not the place for to evaluation of the strength, breadth, or limitations of a Complainant's registered mark. Complainant undeniably holds many registered trademarks for ISO, and the disputed domain name is identical but for the gTLD. Complainant has met its burden of proof under this Policy element.
B. Rights or Legitimate Interests
Complainant has carried its burden of making a prima facie showing that Respondent lacks rights or legitimate interest in the disputed domain name, as Respondent's use of the disputed domain name is commercial, Complainant has never licensed Respondent to use its mark, and Respondent has never been commonly known by the phrase ISO independently of the disputed domain name. In light of this, Respondent must come forward with evidence to demonstrate that it has rights or legitimate interests in the disputed domain name.
Respondent offers his belief, or contention, that anyone has a right to a common word or phrase (or, in this instance, a three-letter combination) so long as a third party's marks are not expressly targeted. So stated that is simply not the case.2 Again as many panels have held, whether Respondent's activities are bona fide for purposes of paragraph 4(a)(ii) depends upon whether its registration and use of the disputed domain name were made in bad faith, so to that issue the Panel now turns.
C. Registered and Used in Bad Faith
At the outset the Panel states firmly that there is no basis on the present record for finding or inferring that Respondent acquired the disputed domain name intending to sell it, to Complainant or anyone else. All that Complainant has provided is evidence, none of it denied by Respondent, that Respondent has sold other domain names at its other website. Buying and selling domain names is not per se unlawful or illegitimate under the Policy. There is no evidence to support Complainant's surmise that Respondent tried to sell the disputed domain name. To the contrary, Respondent refused to transfer the disputed domain name to Complainant. If anything, the available evidence appears to show that Respondent could be selective in placing domain names for sale, refusing to sell those that might tread on third party rights.
For similar reasons there is no basis on the record for the Panel to declare that Respondent's dating service business at the disputed domain name is a “sham”, as Complainant argues. Complainant cites poor quality, typographical errors, scanty text, and low membership as evidence that the business was contrived. While perhaps not as polished as some of its competitors, from the Panel's examination of the website it appears to be exactly what Respondent claims, a service with images and text keyed to interested singles who access the Internet with their mobile telephones. Respondent's explanation for the design and text it has chosen is not on its face preposterous or pretextual. It is certainly far more convincing than Complainant's speculation.
These conclusions do not end the Panel's analysis. One particular fact stands out in this case – the nature of Complainant's ISO marks. Although complainants regularly (and frequently with little foundation) assert that their marks are famous, Complainant here provides overwhelming evidence of the long and widespread use, worldwide registration, and international goodwill associated with its ISO marks, and the association of this three-letter combination with Complainant. They are famous marks in the trademark sense.
It would be extremely difficult for any person engaged in even a small business or other commercial activity to deny knowledge of Complainant or its marks. Though stating in passing at one point in the Response that he had no such knowledge, Respondent's representative3 makes a slightly different contention: “Even if it were possible to infer that the Respondent knew of the Complainant, the registration of a conflicting domain name would not be bad faith without an intention by the Respondent to exploit the trademark significance of that domain name” (emphasis supplied; citation omitted). Because of the renown of Complainant's marks the Panel does infer that Respondent knew of Complainant and its ISO marks when it registered the disputed domain name.
The remaining requirement of showing bad faith is whether Respondent selected the disputed domain name to take advantage of Complainant's marks. Respondent denies this, stating instead that:
“I have been working with developers and other designers for quite some time to get a beta adult mobile dating site operational. When I saw that iso.mobi was available I jumped at the chance to register it, as it was a perfect, short, concise name that would work perfectly for “I Seek Others” and was a perfect match for anyone typing the url on a mobile phone. I had also registered ISEEKOTHERS.MOBI /ISEEKOTHERS.COM / ISEEKOTHER.MOBI and ISEEKOTHER.COM to help drive traffic to iso.mobi prior to receiving any dispute notifications.
I have also been in contact with legal counsel and trademark lawyers, previously to receiving any domain dispute notifications, in order to move forward with a trademark on iso.mobi (ISO as an acronym for “I Seek Others).”
Had Respondent demonstrated that some or all of these steps occurred prior to its registering the disputed domain name, or even prior to notice from Complainant of its request for transfer, Respondent might have come within the safe harbor of paragraph 4(c)(i) of the Policy.4 Respondent however has submitted no evidence that these or other “demonstrable preparations” preceded notice of the dispute. Such evidence, if it exists, was within Respondent's control: correspondence with the referenced developers, designers, and lawyers; a business plan; other ventures in the online dating business; earlier use of “I Seek Others”; perhaps even a showing that the phrase “I Seek Others” is commonly used for dating websites.
The objective evidence available to the Panel lends Respondent no support. Quite the contrary, the relevant registrar's WhoIs database indicates that Respondent registered its three “I SEEK OTHERS” domain names on September 11, 2008, the day immediately after its receipt of the initial email from Complainant's general counsel, and the same day that Respondent replied to that email.5
It is not clear from the parties' evidence or publicly available information6 precisely when Respondent commenced its dating site at the disputed domain name, but it was about the same time as Complainant's registrar's first email. Earlier activation of the website, however, would not by itself clear such use or Respondent's earlier registration of bad faith, or even provide a presumption of that. If the allure to Respondent of the disputed domain name was the likelihood of numerous visits from users seeking Complainant, that fact would demonstrate bad faith for purposes of the Policy whether the site was used to compete with Complainant, for the Indianapolis Symphony Orchestra,7 for a dating business, or for any other purpose. Peter Frampton v. Frampton Enterprises, Inc.,
WIPO Case No. D2002-0141.
No one but Respondent will ever know for certain the subjective reasons for its registration of the disputed domain name, see Mani Brothers, LLC v. Lincoln Gasking,
WIPO Case No. D2008-0097 (majority and dissenting opinions), especially in a Policy proceeding that does not contemplate or provide for live testimony. The Panel must base its decision upon the available objective evidence. Three facts lead the Panel to conclude that Complainant has shown registration and use in bad faith. First, as noted in the fifth preceding paragraph the Panel has inferred that Respondent was aware of Complainant and its ISO marks when it registered the disputed domain name. Second, Respondent is a self-acknowledged domainer; at its other website it offers several thousand domain names for sale. In the Response Respondent knowledgably discusses the “.mobi” gTLD and other matters related to the domain name system and Internet business generally. An entity this experienced in domain names would surely recognize the value of a domain name incorporating a standalone famous mark. Third, Respondent, unlike some domain name aggregators,8 has made no effort to identify procedures it regularly employs to avoid stepping on third party rights when acquiring domain names. Indeed Respondent, unlike other domainers that regularly acquire large numbers of domain names, does not assert that the registration of the disputed domain name occurred incidentally through automated procedures; rather its representative acknowledges expressly selecting it.
Respondent's statement quoted above reveals its real defense. Respondent believes that it may use any “common phrase” or word or letter combination for its domain name so long as the use to which it is put does not compete with that of an owner of a trademark incorporating that phrase. As the Panel has stated, this is not the case generally, and it is particularly not the case when the mark at issue is world famous.
Finally, Respondent's less than total candor in its email correspondence with Complainant (and in the Response) regarding its registration of the other three “I seek others” domain names indicate that Respondent has something to hide. Post-notice actions have frequently been cited as irrelevant to defenses under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy, and as evidence of registration and use in bad faith.9
Complainant has shown by the available evidence that Respondent registered and used the disputed domain name in bad faith. Thus Respondent's use of the disputed domain name was not bona fide, and Respondent lacks rights or a legitimate interest in it.
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 disputed domain name <iso.mobi> be transferred to Complainant.
Richard G. Lyon Sole Panelist
Dated: December 23, 2008
1 The registrar offered to reimburse Complainant's expenses in re-registering the disputed domain name.
3 Mr. Rose uses the first person throughout the Response, so it is likely that he is the sole principal of Respondent. In any case his knowledge would be deemed knowledge of his company.
4 Paragraph 4(c)(i) provides that a respondent can demonstrate a right or legitimate interest by showing “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”.
5 This fact gives some credence to Complainant's charge that the dating site is pretextual.
6 As Respondent notes, the Wayback Machine at “www.archive.org” presently lags about six months behind the current date, so it cannot be searched for this information.
7 The Indianapolis Symphony Orchestra also has and uses the initials ISO.
