The domain names at issue are the-body-shop-digital.com; and bodyshop-digital.com and the Registrar is Alabanza Inc. doing business as Bulkregister.com ["Bulkregister"]

3. Procedural History

The WIPO Arbitration and Mediation Center [the Center] received the Complaint on August 14, 2000 [electronic version] and on August 21, 2000 [hard copy]. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy [the Policy], the Rules for Uniform Domain Name Dispute Resolution Policy [the Rules], and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy [the Supplemental Rules]. The Complainant made the required payment to the Center.

The formal date of the commencement of this administrative proceeding is August 30, 2000. On August 22, 2000 the Center transmitted via email to Bulkregister a request for registrar verification in connection with this case and on August 24, 2000 Bulkregister transmitted by email to the Center Bulkregister's verification response confirming that the registrant is Simon Keyes and that the contact for both administrative and billing purposes is Lark of Units 1 & 2, 65 James Carter Road, Mildenhall, Suffolk IP28 7DE, United Kingdom.

Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on August 30, 2000 to: [email protected]; [email protected];and [email protected] this Notification of Complaint and Commencement of the Administrative Proceeding. The Center advised that the Response was due by September 18, 2000. On the same day the Center transmitted by fax and by mail copies of the foregoing documents to: Simon Keyes, 81 Sydney Road, Muswell Hill, London N10 2LY, United Kingdom and to Lark, Units 1&2, 65 James Carter Road, Mildenhall, Suffolk, IP28 7DE, United Kingdom.

A Response was received from the Respondent on September 15, 2000 [electronic version] and on September 20, 2000 [hard copy]. Acknowledgement of Receipt of Response was sent by the Center on September 15, 2000 to the Respondent using the same contact details and methods as were used for the Notification of Complaint and Commencement of the Administrative Proceedings and also to [email protected].

On September 26, 2000 [electronic version] and September 27, 2000 [hard copy] the Center received from the Complainant a Response to Correct Factual Errors in Respondent's September 15, 2000 Submission. That Submission was sent by the Center on September 27, 2000 to the Respondent again using the same contact details and methods as were used for Acknowledgement of Receipt of Response. No reply thereto has been received from the Respondent. Having regard to the nature of the Complainant's second Submission of September 26/27, 2000, the Panel in its discretion admits that Submission [Rules, paragraph 12]. The relevance, materiality and weight of the statements concerned in that Submission are reflected in this Decision [Rules, paragraph 10(d)].

Having received on October 23, 2000 Mr David Perkins' Declaration of Impartiality and Independence and his Statement of Acceptance, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr David Perkins was formally appointed as the Sole Panellist. The Projected Decision Date was November 7, 2000. The Sole Panellist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.

Having reviewed the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under para. 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondents". Therefore, the Administrative Panel shall issue its Decision based upon the Complaint, the Response, the Complainant's Response to Correct Factual Errors, the Policy, the Rules and the Supplemental Rules and without the benefit of any Response from the Respondents.

4. Factual background

4.1 The Complainant

The Complainant was founded in 1976. It manufactures and sells natural based skin care, hair care and other personal care products under and by reference to the name and mark THE BODY SHOP. The Complainant retails its products internationally through more than 1,700 retail outlets operating under THE BODY SHOP name and mark, located in 49 countries. In the United Kingdom there are over 270 such outlets and in the United States there are over 280. In 1999 worldwide sales of the Complainant's THE BODY SHOP products totalled nearly US$1 billion. Further particulars of the Complainant's business are set out below.

4.2 The Respondent

The Respondent resides in Muswell Hill, London. No particulars are given in the Response as to his business or activities, except that (as will be detailed below) he maintains that the two domain names in issue were registered for his wife's uncle's car body spraying business and for his father's small solar panel business.

4.3 The Complainant's Trademarks for THE BODY SHOP

The Complainant claims to be the owner of numerous trademark registrations worldwide for THE BODY SHOP in block letter and logo formats covering various goods and services including:

Country

Registration No

Mark

Class

Application & Registration Dates

United Kingdom

1,492,946

THE BODY SHOP

Applied for March 2, 1992

Registered April 23, 1993

United Kingdom

1,491,478

THE BODY SHOP

Applied for February 20, 1992

Registered June 13, 1993

United Kingdom

1,491,851

THE BODY SHOP

Applied for February 20, 1992

Registered July 30, 1993

United Kingdom

1,491,853

THE BODY SHOP

Applied for February 20, 1992

Registered July 30, 1993

United Kingdom

1,491,847

THE BODY SHOP

Applied For February 20, 1992

Registered July 30, 1993

United Kingdom

1,425,165

THE BODY SHOP

Applied for April 17, 1990

Registered December 13, 1991

United States

970,931

THE BODY SHOP

October 16, 1973 with first use in commerce September 29, 1970

United States

2,256,604

THE BODY SHOP

June 29, 1999 with first use in commerce in 1973

United States

1,666,465

THE BODY SHOP

9 & 16

December 3, 1991 with first use in commerce in July 1988

United States

1,502,631

THE BODY SHOP

August 30, 1988 with first use in commerce on September 29, 1970

4.4 The Complaint also lists as representative of its worldwide trademark rights trade mark registrations for THE BODY SHOP in block letters and logo formats in Australia: the Benelux: Brunei: Canada: Denmark: France: Germany: Greece: Indonesia: Ireland: Japan: Korea: Mexico: New Zealand: Saudi Arabia: Singapore: Spain: Sweden; and Switzerland.

4.5 The Complainant's trademark applications for THE BODY SHOP DIGITAL

The Complainant has filed the following additional service mark applications:

Country

Application No

Mark

Class

When applied for

United States

76/082,891

THE BODY SHOP DIGITAL

July 5, 2000

United States

76/082,892

THE BODY SHOP DIGITAL.com

July 5, 2000

4.6 The Complainant's Business

Advertising and Promoting THE BODY SHOP name and mark worldwide

The Complainant states that it has extensively advertised and marketed THE BODY SHOP name and mark in a variety of ways, including promotional literature, print advertisements, direct mail catalogues, press releases, media interviews, rallies and the like. Further, the Complainant states that THE BODY SHOP name and mark is also prominently featured and internationally recognised through the Complainant's involvement in social, environmental, humanitarian, and ethical causes and campaigns. In 1990 the Complainant formed The Body Shop Foundation, a charity to fund groups committed to human rights and environmental protection. In 1998, to promote the 50^th anniversary of the signing of the Universal Declaration of Human Rights by the United Nations, the Complainant launched a worldwide campaign with Amnesty International to highlight the plight of human rights activists around the world. In 2000 the Complainant will bestow the first THE BODY SHOP Human Rights Award.

4.7 The Complainant's Website

THE BODY SHOP name and mark has also been promoted by the Complainant on its website located at www.the-body-shop.com. The domain name THE-BODY-SHOP.com was registered by the Complainant on March 13, 1995.

4.8 THE BODY SHOP is a famous mark

The Complainant asserts that, in the light of the foregoing, THE BODY SHOP mark has become famous. Whether this is the case or not, the Panel from its own knowledge and observation considers THE BODY SHOP to be a well known mark in at least the United Kingdom and the United States.

4.9 THE BODY SHOP DIGITAL

The Complainant's applications in the United States for this service mark are set out in paragraph 4.5 above. On April 26, 2000 the Complainant announced the creation of an e-commerce venture known as THE BODY SHOP DIGITAL. This is a joint venture with SOFTBANK Venture Capital, a leading venture capital provider in worldwide internet commerce. The new company, based in Seattle, holds the exclusive rights to develop worldwide THE BODY SHOP brand online. THE BODY SHOP DIGITAL lifestyle website is currently under development and is scheduled to be launched later this year. From a date prior to August 2000 the Complainant has maintained a website posted at the domain name THE BODYSHOPDIGITAL.com which contains what appears to be the Press release of April 26, 2000. The creation of this company is to develop the Complainant's e-commerce activities and global internet presence. The company is owned as to 59% by the Complainant, 24% by SOFTBANK VC, 15% is reserved for a stock option plan for employees of the new company and the remaining 2% is reserved for equity participation by the Complainant's franchisees.

4.10 The Complainant asserts that the Press Release of April 26, 2000 was issued to numerous media organisations worldwide and is estimated to have reached millions of people. Since that date THE BODY SHOP DIGITAL has been the subject of extensive local and international media coverage, including coverage by broadcast networks such as the BBC and CNNFN and in the Press.

4.11 The Respondent's activities complained of

On April 26, 2000 - only 2 days after the April 26, 2000 Press release relating to THE BODY SHOP DIGITAL venture - the Respondent registered the two domain names in issue, together with the following 4 ccTLDs:

THE-BODYSHOP-DIGITAL.co.uk;

BODYSHOP-DIGITAL.co.uk;

BODY-SHOP-DIGITAL.co.uk; and

THE-BODY-SHOP-DIGITAL.co.uk

4.12 The Dialogue between the Parties

May 17, 2000: The Complainant's US Counsel wrote to the Respondent [by e-mail and by registered mail] putting him on notice of the Complainant's international rights in THE BODY SHOP trademark and requesting the Respondent to cease and desist plans to use the two domain names in issue and to transfer those domain names and any other domain names owned by him likely to cause confusion with the Complainant's THE BODY SHOP and THE BODY SHOP DIGITAL trademarks and names.

May 31, 2000: The Respondent states that he received this letter.

June 2, 2000: The Respondent telephoned the Complainant's US counsel, Mr Mark Sommers. The substance of that conversation is summarised in Mr Sommers' letter to the Respondent of the same date, which states that:

- The Respondent advised him that the two domain names in issue were registered, one for the Respondent's father for his solar panel business and the other for a "friend's garage". There is no material disagreement to this in the Respondent's subsequent letter to Mr Sommers dated July 3, 2000.

- The Respondent advised that he had only registered the two domain names in issue, this but was inaccurate because the Complainant by then knew of the four ccTLDs [see, paragraph 4.11 above]. The Respondent states in his letter of July 3, 2000 that in the telephone conversation he referred to two sets of domain names, one set for a friend's body shop garage and another set for his father's company. Further, the Respondent states that he specifically referred Mr Sommers to the additional ccTLDs. The Panel observes that the cease and desist letter requested the Respondent's undertaking to "permanently refrain from any and all use and registration of THE BODY SHOP or any variation of this trademark and trade name, as a trademark, trade name, domain name, or other identifier that is likely to caused confusion with our client's famous THE BODY SHOP trademark and trade name or otherwise likely to dilute the distinctiveness of that mark."

Since Mr Sommer's version of the conversation is contemporaneous, the Panel accepts his version over that subsequently proposed by the Respondent. This does not, however, impact on the Panel's Decision in this case.

- The Respondent would not transfer the domain names in issue to the Complainant. The Respondent challenged this as follows:

No confusion between the Complainant's business and the proposed website for car spraying could possibly occur. In fact, the Respondent would post a disclaimer on its website.

He offered to sell the two domain names in issue for a value reflecting

"… on their cost, benefit in search engine visibility, and my time taken in researching and responding to your letters (currently 30 hours)."

- He offered to submit to ICANN proceedings on the two domain names in issue and that, in the event that the Complainant should prevail in such administrative proceeding, he would also transfer the ccTLDs to the Complainant "… providing the Body Shop pays the nominal amount it cost me to register these names and agrees to take no further action against me if I should win the ICANN proceedings."

June 12 & 15, 2000: On June 12, 2000 Mr Sommers and the Respondent again spoke by telephone and on June 15, 2000 Mr Sommers wrote to the Respondent, summarising the content of that conversation. This records:

- The Respondent's disclosure of the .co.uk TLDs.

- As to the Respondent's friend's garage business, that the party involved is the Respondent's wife's uncle, who "… has a worldwide auto body painting business that stretches to the Far East."

- But, the Respondent refused to divulge to Mr Sommers the name of that business;

- and recites the offer to sell summarised above.

Those offers were rejected by the Complainant.

July 1, 2000: The Respondent states that he received the letter of June 15, 2000. In his letter of July 3, 2000 he states

- that he has been unable to find any US trademark for THE BODY SHOP DIGITAL and invites the Complainant to provide particulars of such trademarks ante dating registration of the domain names in issues;

- that the term BODY SHOP is generic to automotive business. [This theme is repeated and expanded upon in the Response, see paragraph 6.2.3 below];

- that the domain names are not confusingly similar to any of the Complainant's trademarks which ante date registration of those domain names;

- that he has no intention of interfering with the Complainant's business;

- that the domain names were not registered in bad faith; and

- that he will resist efforts by the Complainant to "bully me out of my assets."

The Parties' Contentions

5.1 The Complainant

The Complainant contends that the domain names in issue are confusingly similar to the Complainant's THE BODY SHOP and THE BODY SHOP DIGITAL marks, that the Respondent has no rights or legitimate interests in respect of the domain names and that they were registered and are being used in bad faith.

5.2 The Respondent

The Respondent deals with each of the elements of paragraph 4a of the Policy as follows.

5.2.1 The Complainant's Trade Marks

First, that THE BODY SHOP trademarks are not distinctive. A body shop is widely known as a place in which work is carried out on the repair or modification of the bodywork on an automobile. He exhibits examples of such use of the words "Body Shop" taken from the Internet at Yahoo.com and at AltaVista.com.

Second, that the proposed uses for the two domain names in issue - one for a web site for a company specialising in respraying automobile bodywork and the other for a web site for a company supplying solar panels - cannot be confusingly similar to the Complainant's marks. Even if the Respondent's websites were mistakenly accessed by a party searching for the Complainant's website, any such confusion would be quickly dispelled.

Third, that because "digital" is a word commonly "used to describe any media used by a computer", the Complainant's THE BODY SHOP DIGITAL mark is also non-distinctive.

5.2.2 Rights and Legitimate Interests

It is only by reason of "other commitments" that the Respondent has not yet been able to begin work on the web sites intended for the tow domain names in issue. The Respondent points in this respect to the Complainant's THE BODYSHOPDIGITAL.com failing to resolve to an active website. This is in correct, see paragraph 4.9 above.

5.2.3 Registration in Bad Faith

First, the Respondent concedes that he was aware of the Complainant when the two domain names were registered on April 28, 2000.

Second, the fact that the Complainant has registered 4 ccTLDs incorporating the words BODY SHOP and THE BODY SHOP in addition to the two domain names in issue does not constitute a pattern of conduct for the purpose of paragraph 4b(ii) of the Policy.

5.2.4 Use in Bad Faith

First, the Respondent contends that, because there will be no confusion as to the respective businesses of the parties (see, paragraph 5.2.1 above), there is no use in bad faith.

Second, the Respondent has offered to post-disclaimers on the web sites as evidence of his good faith.

Third, it follows from the foregoing that use of the two domain names in issue will not disrupt the Complainant's business.

Fourth, the two domain names in issue do not adversely affect the Complainant's ability to do business on the Internet.

Fifth, the proposed uses of the domain names will not constitute infringement of the Complainant's trade marks. The Respondent's use will amount to no more than use of words, which happen to be trademarks, for their non-trademark value.

6. Discussion and Findings

6.1 Under paragraph 4a of the Policy, the Complainant must prove three distinct elements in order to succeed with a claim for transfer of a domain name, namely;

- that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- that the Respondent has no rights or legitimate interests in respect of the domain name; and

- that the domain name has been registered and is being used in bad faith

6.2 Identical or Confusingly Similar

6.2.1. First, the Respondent contends that the Complainant does not have rights in THE BODY SHOP DIGITAL mark, which predate registration of the two domain names in issue on April 28, 2000. The Complaint identifies the subsequent (July 5, 2000) applications to register THE BODY SHOP DIGITAL and THE BODYSHOPDIGITAL.com as service marks in the United States (see, paragraph 4.5 above).

6.2.2 The Panel rejects that challenge. It is not necessary for the Complainant to have registered rights in a trademark for the purposes of paragraph 4a(i) of the Policy. Such rights can exist independently of registration. Given the considerable renown of the Complainant's THE BODY SHOP name and mark and the widespread media coverage on April 26, 2000 of it’s the BODY SHOP DIGITAL venture, the Panel is satisfied that the Complainant's prior rights in THE BODY SHOP DIGITAL mark are adequately established. The Panel refers to the similar fact situations in the Danish Re case [Case D2000-1096], the Time Warner case [Case D2000-0433] and in the Astro-Med .v. Merry Christmas Everyone [Case D2000-0072].

6.2.3 Second, the Panel rejects the Respondent's contention based on the generic use of "body shop" in relation to automotive businesses as depriving the Complainant of rights in THE BODY SHOP and THE BODY SHOP DIGITAL marks for the purpose of the Policy to challenge the validity of registered trade marks.

6.2.4 Third, the Panel does not regard the test of confusingly similar as requiring the Complainant to show trade mark infringement by the Respondent. Whilst the Panel is entitled to apply "… any rules and principle of law that it deems applicable" [Rules, paragraph 15(a)], this does not mean that the appropriate test for confusingly similar is necessarily that of the US Courts. Take, for example, the jurisprudence of European law on the issue of likelihood confusion. The European Court of Justice has now repeatedly held that the stronger the distinctive character and reputation of a particular mark, the easier it will be to establish likelihood of confusion and detriment to that mark: Sable BV .v. Puma A.G. [1998] RPC 199: Canon .v. MGM [1999] RPC 117: the Lloyd Schufabrik case [1999] All ER (EC) 587; and General Motors .v. Yphon [1999] All ER (EC) 865. Other principles, for example unfair competition, may be equally applicable.

6.2.5. In this case, the Panel considers there has - as contended for by the Complainant - been a clear attempt by the Respondent to appropriate the very considerable goodwill associated with the Complainant's THE BODY SHOP and THE BODY SHOP DIGITAL marks. There is substantial identicality between the two domain names in issue and the Complainant's long established THE BODY SHOP name and mark. That alone in the Panel's opinion satisfies the requirement of confusingly similar for the purposes of the Policy. The suggestion that use of the word "digital" somehow deprives the Complainant of trade mark rights in THE BODY SHOP DIGITAL is rejected by the Panel. Finally, the use of hyphens and, as regards the second domain name, omission of the definite article do not assist the Respondent.

6.2.6. In the light of the foregoing the Panel finds that the Complainant succeeds in establishing the requirement of paragraph 4a(i) of the Policy.

6.3 Rights or Legitimate Interests

The Respondent fails to bring himself within any of the circumstances set out in paragraph 4c of the Policy as demonstrating his rights or legitimate interests in the two domain names in issue, nor does he advance any other circumstances which in the Panel's view apply. There is no probative evidence to demonstrate either the actual existence of the two businesses - automotive respraying and the supply of solar panels - or that before notice of the dispute (the Complainant's lawyers' letter of May 17, 2000) the Respondent had made any preparation to use the domain names in issue (or either of them) for those businesses. The Panel also considers the Respondent to be in breach of his representation and warranty when registering the domain names in issue that to his knowledge those registrations would not infringe upon or otherwise violate the rights of any third party [paragraph 2 of the Policy]. The Panel finds that the Complainant succeeds in establishing the requirement of paragraph 4a(ii) of the Policy.

6.4 Registration in Bad Faith

The Respondent admits knowledge of the Complainant when, two days after the public announcement of the Complainant's THE BODY SHOP DIGITAL venture, he registered the two domain names in issue. That, coupled with the Panel's finding that the Respondent has failed to demonstrate rights or legitimate interests in respect of the domain names, amounts to evidence of registration in bad faith. Further, the Panel takes the view that registration of the additional 4 BODY SHOP ccTLDs (see, paragraph 4.11 above) amounts to a pattern of conduct aimed at precluding the Complainant from fully exploiting its e-commerce business presence on the Internet under THE BODY SHOP and THE BODY SHOP DIGITAL marks.

6.5 Use in Bad Faith

The Complainant has not licensed or otherwise authorised use by the Respondent of these marks and unauthorised use of them in the form of the domain names in issue is likely to cause detriment to those marks. Although the domain names in issue have not been used for active websites, inaction (passive holding) can constitute bad faith use. The circumstances set out in paragraph 4b of the Policy are not exclusionary of other factors. The Panel must give close attention to all the circumstances of the Respondent's behaviour [Telstra .v. Nuclear Marshmallows Case D2000-0003].

In this case, the respondent has offered to sell the two domain names in issue for a value based"on their cost, benefit in search engine visibility, and my time taken in researching and responding to your letters (currently 30 hours)" [emphasis added]

The reference to value in terms of "benefit in search engine visibility" indicates an intention to register the domain names in issue primarily for the purpose of selling them to the Complainant for a consideration in excess of the Respondent's documented out of pocket expenses directly related to those domain names.

He has also offered to transfer to the Complainant his .co.uk ccTLDs (see, paragraph 4.12 above) in the event that under the UDRP a Panel directs transfer to the Complainant of the two domain names in issue in this administrative proceeding, This, in the Panel's view, is an acceptance by the Respondent that the domain names are susceptible to a finding of use in bad faith. Adding these factors to those identified in paragraphs 6.4 and 6.5 above, the Panel considers that the overall circumstances of the Respondent's behaviour constitute evidence of use in bad faith.

6.7 The Panel, therefore, finds that the Complainant succeeds in establishing both limbs of paragraph 4a(iii) of the Policy.

7. Decision

For all the foregoing reasons, the Panel decides that the Complainant has satisfied each of the three elements of paragraph 4a of the Policy and accordingly the Panel directs that the domain names THE-BODY-SHOP-DIGITAL.com and BODYSHOP-DIGITAL.com be transferred to the Complainant.

David Perkins
Sole Panellist

Dated: 9 November 2000