ISO fails to obtain transfer of ISO 9000 domain names

International

In International Organization for Standardization v AQI, a three-member World Intellectual Property Organization (WIPO) panel has refused to transfer four domain names that include the phrase 'ISO9000' to the complainant.

The International Organization for Standardization (ISO) is a non-profit, non-governmental organization that comprises a worldwide federation of national standards bodies. ISO developed and promotes the world-famous ISO 9000 series of standards. It holds registration rights in the ISO trademark. AQI, had, for several years, organized the International Conference on ISO 9000 and provided information on this and related standards. AQI registered the domain name 'iso9000directory.com' in 1995, and 'iso9000conference.com', 'iso9000institute.com' and 'iso9000standards.com' in 2001. ISO filed a complaint with WIPO requesting the transfer of the four domain names.

The panel accepted that AQI had regularly and widely used the domain name 'iso9000directory.com' for the website of the ISO 9000 conference until 2003. It also accepted that AQI was using the domain name 'iso9000conference.com' and the term 'iso9000institute' in its email address. The panel found that ISO knew of the use as it had been in regular contact with AQI, but for the past 12 years had raised no objection. The panel was therefore satisfied that AQI had legitimate interests in these domain names. AQI was not, however, able to justify its use of the 'iso9000standards.com' domain name.

Despite this, the panel found that ISO had not shown that AQI had registered and was using any of the domain names in bad faith. Further, ISO was unable to demonstrate that its policy statement with regard to the use of the ISO name on the Internet was already published on its website when AQI registered the disputed domain names. Lastly, the panel established that AQI had been using the 'iso9000directory.com' and 'iso9000conference.com' domain names, as well as the term 'iso9000institute' with ISO's knowledge unchallenged for over 10 years.

Accordingly, the panel refused to transfer the domain names. One panellist even suggested that this was a case of reverse domain name hijacking but the other two were not convinced.

Aaron Wood, Hammonds, London

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