ANSI - American National Standards Institute
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International Standards Organization Wins Arbitration Over Domain Name Use on Internet

ISO Says "Think Again" to Companies Planning to Misuse Its Trademark

New York, Feb 05, 2002

In a recent press release, the International Organization for Standardization (ISO), a non-governmental, worldwide federation of national standards bodies to which ANSI is the U.S. national member body, announced that it had won an important ruling to protect the integrity of its trademark for use in domain names on the Internet.

The ruling emanated from the Arbitration and Meditation Center of the World Intellectual Property Organization (WIPO) in a case that involved the use of three domain names by a private company over the Internet. WIPO indicated that these domain names--"isostandards.org," "isostandards.net" and "iso-qa.com"--were "confusingly similar" to ISO's trademark, which is "highly regarded and carries with it a reputation for integrity" and therefore were "used in bad faith" by the company. The domain names were ordered transferred to ISO.

WIPO's official statement explained the reasoning behind the decision: "The combination of ISO, an internationally recognized trademark, and 'standards' or 'qa,' [which stands for quality assurance] makes the domain names confusingly similar to the ISO trademark." WIPO added that references on the website to 'ISO standards compliance' increased the impression that the company has some association with ISO, as well as indicated that the firm was aware of ISO's reputation and function at the time it registered the domain names.

ISO reported that WIPO's favorable decision indicated that it had accepted the organization's argument that the company had "intentionally attempted for commercial gain to attract Internet users to its website by using ISO's name with the likelihood of creating confusion as the source, sponsorship, affiliation or endorsement of the private company's website or products." ISO does not authorize the use of its name in Internet domain names by any organization other than its members. Its policy on this issue clearly 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."

"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," noted Evgueni Patrikeev, the ISO manager dealing with the protection of ISO's name. He also indicated that the organization had been recently successful in resolving similar cases amicably and that this was the first time it had to resort to official arbitration. Mr. Patrikeev was confident that WIPO's decision had set a precedent for future cases and that "companies or individuals who have previously ignored [ISO's] requests to stop using [its] name, or who may be tempted to use it in the future, will need to think again."

Established in 1947, ISO's mission is to promote the development of standardization and related activities in the world with a view to facilitating the international exchange of goods and services, and to developing cooperation in the spheres of intellectual, scientific, technological and economic activity.

AN INTRODUCTION TO STANDARDS: WHY, WHERE AND HOW ARE THEY DEVELOPED?