The Arbitration and Mediation Center of WIPO (World Intellectual Property Organization) has ruled that the three domain names, "isostandards.org", "isostandards.net" and "iso-qa.com" being used by a private company on Internet were "confusingly similar" to ISO's trademark and had been registered and were being used "in bad faith". It has ordered that the three names be transferred to ISO.
Acknowledging that the ISO mark is "highly regarded and carries with it a reputation for integrity", WIPO stated in its official notification of the ruling that the use of "ISO" in conjunction with the word "standards" evoked the nature of ISO's business, while the linking of "ISO" with "qa" - which stands for "quality assurance" - evoked an unwarranted implication of standards compliance assessments.
"The combination of 'ISO', an internationally recognized trademark, and 'standards' or 'qa' makes the domain names confusingly similar to the ISO trademark," WIPO declared, adding that references on the Web site which had used the names to "ISO standards compliance" increased the impression that the site had some association with ISO, as well as indicating that the private company was aware of ISO's reputation and function at the time it registered the domain names.
In finding in favour of ISO, WIPO expressed its acceptance of ISO's argument that the company had intentionally attempted, for commercial gain, to attract Internet users to its Web site by using ISO's name with the likelihood of creating confusion as to the source, sponsorship, affiliation or endorsement of the private company's Web site or products.
ISO does not authorize the use of its name in Internet domain names by any organization other than its members. In ISO's policy on this issue, it states: "Such use could mislead third parties into believing that the organization concerned represents ISO, or has been approved or authorized to act on behalf of ISO. Therefore, ISO will take whatever actions it considers necessary to prevent the misuse of its name."
Evgueni Patrikeev, the ISO manager dealing with the protection of ISO's name, noted that although this case was the first time ISO had had to have recourse to official arbitration over misuse of its name in Internet domain names, it had recently been successful in resolving several other examples amicably. These other examples covered Internet domain names such as "iso.org","isoaudit.com", "isoauditor.com", "isoexperts.com", "isowebsite.com" and other variants.
"Our going to the WIPO Arbitration and Mediation Center when the matter could not be resolved amicably shows that we are serious in taking measures to prevent the misuse of the ISO name," Mr. Patrikeev commented.
"This precedent should help us in any similar future cases which may arise, whether before WIPO or in civil courts. Companies or individuals who have previously ignored our requests to stop using our name, or who may be tempted to use it in future, will need to think again."