thebodyshop.org

The Body Shop International plc v. David Sweeton

Case No. D2003-0991

The Complainant is The Body Shop International plc, West Sussex, United Kingdom of Great Britain and Northern Ireland represented by Michael Treis of Baker & McKenzie, Switzerland.

The Respondent is David Sweeton, Jonesboro, Georgia, United States of America.

The disputed domain name <thebodyshop.org> is registered with Network Solutions, Inc. Registrar.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 12, 2003. On December 16, 2003, the Center transmitted by email to Network Solutions, Inc., Registrar a request for registrar verification in connection with the domain name at issue. On December 19, 2003, Network Solutions, Inc. Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 the Respondent of the Complaint, and the proceedings commenced on January 13, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was February 2, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 3, 2004.

The Center appointed Alessandra Ferreri as the sole panelist in this matter on February 11, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

The Complainant is a public limited company established under the laws of England. It is the owner of a broad range of trademark registrations worldwide for THE BODY SHOP and it has been trading under that name since 1976, in connection with beauty products. In the United States of America the Complainant has registered several trademarks consisting of or including the words THE BODY SHOP.

The Respondent is an individual called David Sweeton who seems to reside in the United States of America.

The Complainant contends that THE BODY SHOP is a famous trademark which enjoys worldwide reputation and goodwill in connection with beauty products.

The Complainant states that the domain name <thebodyshop.org> registered by the Respondent is identical to said trademark in which the Complainant has rights.

The Complainant contends that the Respondent has no rights or legitimate interest in respect of the domain name <thebodyshop.org>. In confirmation of this statement the Complainant asserts that:

- it currently has 1968 shops marked THE BODY SHOP all over the word, 426 of which in the USA;

- it has been trading under its name since 1976,and it is today on the market in 50 countries; for the foregoing reasons the trademark THE BODY SHOP can be considered a famous trademark;

- the Respondent must be aware and must have been aware that the domain name registered by himself corresponds to this famous trademark;

- the Respondent didn’t react to the Complainant’s demand letter of November 6, 2003;

- the Respondent was not authorized to use the Complainant’s famous trademark;

- the Respondent has nothing to do with the Complainant, its business or any of its subsidiaries.

The Complainant states that the domain name was registered and is being used in bad faith for the following reasons:

- the corresponding web-site is inactive/under construction;

- the fact that the respective web-site (that is not active) does not provide information about the Complainant or its products suggests that the Respondent is trying to exploit the goodwill and notoriety of THE BODY SHOP trademark;

- at the time of the registration of the contested domain name the Respondent could not to ignore the Complainant’s trademark rights over the words THE BODY SHOP registered as trademark almost 20 years before;

- by not responding to the Complainant’s demand letter the Respondent demonstrates that he is not willing to voluntarily assign to the Complainant the contested domain name;

- finally it is not possible to realistically conceive a legitimate use of the domain name by the Respondent given the notoriety of the identical Complainant’s trademark.

The Respondent did not reply to the Complainant’s contentions and should therefore be considered in default. The Panel, in compliance with Paragraph 14 of the Rules, shall proceed to a decision on the Complaint and shall draw such inferences therefrom, as it considers appropriate.

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:

i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

ii) the respondent has no rights or legitimate interests in respect of the domain name; and

iii) the domain name registered by the respondent has been registered and is being used in bad faith.

The Panel is satisfied that the Complainant has very extensive rights in the words THE BODY SHOP as a trademark throughout the world including in the USA.

The domain name <thebodyshop.org> is identical or, at least, very confusingly similar to many of the Complainant’s trademarks, and in particular to those merely consisting of the wording THE BODY SHOP.

In fact, the domain name incorporates the well-known trademark THE BODY SHOP with the suffix ".org" (which indicates that the domain name is registered in the .org gTLD). As it was established in many previous decisions (see WIPO Case Nos. D2000-0135,A.P. Møller v.Web Society, Rollerblade, Inc. v. Chris McCrady, D2000-0429, Arab Bank for Investment And Foreign Trade v. Mr. Kenn Wagenheim / [email protected], D2000-1400 and Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, D2001-1447) the specific top level of the domain name such as ".org", ".net", or ".com" does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.

Therefore, apart from the gTLD suffix – which does not have a relevant distinguishing function – there is no difference between the Complainant’s trademark and the disputed domain name.

The Panel thus finds that the Complainant has met its burden under Paragraph 4(a)(i) of the Policy.

The panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant.

In particular, Respondent has failed to offer the panel any of the types of evidence set forth in Paragraph 4(c) of the Policy from which the panel might conclude that Respondent has any right or legitimate interest in the domain name, such as use or preparation to use the domain name prior to notice of the dispute, being commonly known by the domain name, or making legitimate non-commercial or fair use of the domain name.

There is no evidence in the record that Respondent has any right or legitimate interest in the domain name. The Complainant has asserted that the Respondent has no right or legitimate interest in respect of the Domain Name. Namely the Complainant states that as THE BODY SHOP is a famous trademark, the Respondent must be aware and must have been aware of it when he registered the domain name; that the Respondent didn’t react to the Complainant’s demand letter of November 6, 2003; that Respondent was not authorized to use the Complainant’s famous trademark; and that the Respondent has nothing to do with the Complainant, its business or any of its subsidiaries. This contentions are unrebutted and the panel finds them credible.

The only known interest opposing the Complainant’s statements is the fact that the Respondent registered the domain name <thebodyshop.org> on October 23, 2002, and that the corresponding web-site is currently "under construction".

Yet, the Panel agrees with earlier decisions that held that mere registration is not sufficient to establish rights or legitimate interests since: "if this was so, all registrants would have such rights or interests, and no complainant could succeed on a claim of abusive registration" (see General Electric Company v. John Bakhit, WIPO Case No. D2000-0386 and Pomellato S.p.A. v. Richard Tonetti, WIPO Case No.D2000-0493).

Moreover this Panel, in accordance with Paragraph 14(b) of the Rules, finds a fully justified inference "that non-response is indicative of a lack of interest inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights" (see Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493).

Therefore this Panel is satisfied that the second condition is met.

This Panel finds that the domain name was registered and is being used in bad faith. In order to reach this conclusion, the Panel has examined separately two issues:

1) whether or not bad faith existed when the domain name was registered; and

2) whether or not the domain name was used in bad faith.

The principal argument in support of the Complainant’s assertion of the Respondent’s bad faith in the registration of the domain name <thebodyshop.org> is based on the renown of the THE BODY SHOP trademarks and the Complainant’s activity.

The Panel is satisfied that the renown of the trademarks THE BODY SHOP has been demonstrated by the Complainant’s production, namely consisting of a Trademark Portfolio (annex 4a) including all the THE BODY SHOP trademarks (together with others trademarks) owned by the Complainant in a great number of countries and of a list of trademark registrations for THE BODY SHOP in the USA (annex 4b) from which it results that in USA the first use of said trademark, carried out by the Complainant, was in march 1976. On the grounds of this production it seems likely the Complainant’s statement, not borne out by documents, that it currently has 1968 shops marked THE BODY SHOP around the world, 426 of which in the USA.

In the light of the above the Panel takes the view that it is difficult and unlikely that in selecting the domain name the Respondent ignored the Complainant’s existence and renown and intended to do other than bring to mind the Complainant and/or its products.

In the light of the evidence filed by the Complainant, and in the absence of any contrary argument by the Respondent, the Panel concludes that the Complainant’s trademarks and activities should be considered as well-known in many countries, including in the USA where the Respondent is located. Accordingly, in the Panel’s belief, Respondent could not ignore the Complainant’s existence and rights at the time of the registration of the domain name <thebodyshop.org>. In line with other prior decisions (Banca Sella S.p.A. v. Mr. Paolo Parente, WIPO Case No. D2000-1157; Veuve Clicquot Ponsardin v. The Polygenix Group Ltd., WIPO Case No. D2000-0163; Parfums Christian Dior v. Javier Garcia, WIPO Case No. D2000-0226; Ferrero S.p.A. v. Mario Pisano, WIPO Case No. D2000-1794; Ferrero S.p.A. v. Publinord S.r.l., WIPO Case No. D2002-0395) the Panel believes that, in the absence of any right or legitimate interest, and lacking any contrary evidence by the Respondent, the Respondent’s registration of a domain name identical and confusingly similar to the Complainant’s well-known trademarks suggests opportunistic bad faith.

As far as use in bad faith is concerned, the Complainant states that "the corresponding website is inactive/under construction. Thus, the first of the additional criteria that can support a finding of bad faith (no use of the domain name) is met".

In the Panel's view, even if the Respondent had contemplated a use of the domain name <thebodyshop.org> – it currently resolves to a page the content of which is constituted by the words "the bodyshop.org is coming soon" – considering that said domain name was registered in October 23, 2002 (then one year and half ago), this use should be compared to a mere passive holding of the same domain name by the Respondent.

It is known that several WIPO decisions held that use in bad faith does not necessarily entail a positive action, but also inaction in the presence of particular circumstances. (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Compaq Computer Corporation v. Boris Beric, WIPO Case No. D2000-0042; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090).

In the case at issue, the Panel found that: (i) the Respondent lacks any right or legitimate interest in respect of the domain name <thebodyshop.org>; (ii) the Complainant’s trademarks are well-known in USA, where the Respondent is located; (iii) the Respondent has not taken any steps to use the domain name in connection with a bona fide offering of goods and services, or for noncommercial purposes without intent for commercial gain to misleadingly divert consumers or to tarnish the THE BODY SHOP trademarks; and moreover (iv) the Respondent never answered to the Complainant’s demand letter dated November 6, 2003, demonstrating not only that he is not willing to voluntarily transfer the contested domain name but also that he has not got a real interest in it.

The aforesaid circumstances altogether lead the Panel to believe that the domain name <thebodyshop.org> is being used in bad faith.

This Panel has only to add that the Respondent failed to supply accurate and/or up to date contact information to the Registrar. In fact, the communications sent by the Center to the Respondent by e-mail went back to the Center with the message "the following addresses had permanent fatal errors": the addresses are those indicated by the Respondent and correspond to the Administrative contact and Billing contact of the domain name; also the Administrative contact’s telefax number provided by the Respondent is clearly invented. The Panel finds that the Respondent’s bad faith is further demonstrated by the false information about e-mail addresses and telefax number he provided to the Registrar with which the domain name is registered. In many WIPO prior decisions it was well established that the use of false contact information is evidence that Respondent registered the domain name in bad faith (See Chanel v. 1,  WIPO Case No. D2003-0218; Action Instruments, Inc v. Technology Associates, WIPO Case No. D2003-0024; Wachovia Corporation v. Peter Carrington,WIPO Case No. D2002-0775; Royal Bank of Scotland Group v. Stealth Commerce,WIPO Case No. D2002-0155; Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362; Home Director, Inc. v. Home Director, WIPO Case No. D2000-0111).

In light of the foregoing, the Panel is satisfied that also the third condition is met.

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <thebodyshop.org> be transferred to the Complainant.