WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

The Body Shop International PLC v. CPIC NET and Syed Hussain

Case No. D2000-1214

 

1. The Parties

The Complainant is a corporation organised and existing under the laws of the United Kingdom having its headquarters at Watersmead, Littlehampton, West Sussex BN17 6LS, United Kingdom.

The First Named Respondent is CPIC Net with a postal address at 15 5th Street, Closter, NJ, 07624, U.S. The Second Named Respondent is Mr. Syed Hussain having an email address of sjhsm@email.com. The Second Named Respondent is also the Administrative and Billing Contact for the domain name in dispute.

 

2. The Domain Name and Registrar

The domain name in dispute in this Administrative Proceeding is <bodyshopdigital.com>. The Registrar with which the said domain name has been registered is Easyspace Ltd.

 

3. Procedural History

On September 14, 2000, the Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") in digital form and the hard copy was received on September 18, 2000.

On September 18, 2000 the Center sent an Acknowledgement of Receipt of Complaint to the authorized representative of the Complainant by e-mail.

On September 21, 2000 the Center sent a request for Registrar Verification to the Registrar by e-mail. On October 3, 2000 the Registrar responded to the Center by e-mail and inter alia stated that it was in receipt of the Complaint sent by the Complainant, confirmed that it is the registrar of the said domain name <bodyshopdigital.com>, confirmed that the First Named Respondent was at that time the registrant of the said domain name, confirmed that the Uniform Domain Name Dispute Resolution Policy ("the Policy") applied to the said registration and stated that the said registration was active.

The Center reviewed the said Complaint in accordance with paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and paragraph 5 of the WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("the Supplemental Rules") and verified that the Complaint satisfied the formal requirements of the Policy, the Rules and the Supplemental Rules and that the appropriate fees had been paid by the Complainant.

On October 4, 2000 the Center sent a Notification of Complaint and Commencement of Administrative Proceeding relating to the said domain name <bodyshopdigital.com> to the Respondents by post/courier (with enclosures), by facsimile (Complaint without attachments) and by e-mail (Complaint without attachments). A copy of said Notification was sent to the authorised representative of the Complainant by e-mail. Further copies of said Notification were sent to the Internet Corporation for Assigned Names and Numbers ("ICANN") and to the Registrar (Complaint without attachments).

Said Notification of Complaint and Commencement of Administrative Proceeding inter alia advised the Respondents that the Administrative Proceeding had commenced on October 5, 2000 and that the Respondents were required to submit a Response to the Center on or before October 24,2000.

No Response was filed by the Respondents.

On October 25, 2000 the Center sent a Notification of Respondent Default to the Respondents advising the Respondents inter alia, that the Respondents had failed to comply with the the deadline for submission of the Response and in accordance with the Rules and the Supplemental Rules, the Center intended to proceed to appoint a single member Administrative Panel.

On November 14, 2000, having invited James Bridgeman to act as Administrative Panel in this Administrative Proceeding, and having received a Statement of Acceptance and Declaration of Impartiality from the said James Bridgeman, the Center proceeded to appoint this Administrative Panel.

In the view of this Administrative Panel, the proper procedures were followed and this Administrative Panel was properly constituted.

 

4. Factual Background

The Complainant is a retailer and manufacturer of natural-based skin care, hair care, and other personal care products. The Complainantís products are marketed and sold under the <THE BODY SHOP> trademark at company-owned or franchised stores trading as <THE BODY SHOP>, through mail order, and through registered consultants in its home selling program known as <THE BODY SHOP DIRECT>.

The Complainant is the owner of numerous trademark registrations for said <THE BODY SHOP> trademark in block letter and logo formats covering various goods and services in countries throughout the world, including the following registrations in the United States and the United Kingdom:

  1. United States Registration No. 970,931 for <THE BODY SHOP>, dated October 16, 1973, in respect of cosmetics, toilet preparations, bath soap, and hair shampoo in International Class 3.
  2. United States Registration No. 2,256,604 for <THE BODY SHOP>, dated June 29, 1999, in respect of retail store services and mail order catalog services for cosmetics, toiletries, skin care preparations and hair care preparations, rendering technical aid and assistance in the established of businesses and retail stores selling cosmetics, toiletries, skin care preparations and hair care preparations; preparing advertisements and promotional materials for franchisees, in International Class 35.
  3. United States Registration No. 1,502,631 for <THE BODY SHOP>, dated August 30, 1988, in respect of retail store services for the sale of cosmetics and toiletries in International Class 42.
  4. United States Registration No. 1,666,465 for <THE BODY SHOP>, dated August 30, 1988, in respect of prerecorded videotapes featuring information on skin, hair care, and cosmetics, in International Class 9; and books and pamphlets in the field of skin and hair care and cosmetics, in International Class 16.
  5. United Kingdom Registration No. 1492946 for <THE BODY SHOP>, dated March 2, 1992, in respect of perfumes, soaps, shampoos, cosmetics, non-medicated toilet preparations; haircolourants, hair conditioners, hair dyes, hair lotions and hair styling preparations; non-medicated talcum powder for toilet purposes; sun-tanning preparations (cosmetics); non-medicated massage preparations; bath additives, bath oils and bath salts, none for medical purposes; shaving preparations; dentifrices; essential oils; beauty masks, facial packs, nail care preparations, nail varnish; pumice stone, cotton sticks; cotton wool for non-medical purposes; scented articles, all for perfumery use; pot pourri, powder impregnated paper for cosmetic use; abrasives for personal use, in Class 3.
  6. United Kingdom Registration No. 1491478 for <BODY SHOP>, dated February 20, 1992, in respect of perfumes, soaps, shampoos, cosmetics, non-medicated toilet preparations; haircolourants, hair conditioners, hair dyes, hair lotions and hair styling preparations; non-medicated talcum powder for toilet purposes; sun-tanning preparations (cosmetics); non-medicated massage preparations; bath additives, bath oils and bath salts, none for medical purposes; shaving preparations; dentifrices; essential oils; beauty masks, facial packs, nail care preparations, nail varnish; pumice stone, cotton sticks; cotton wool for non-medical purposes; scented articles, all for perfumery use; pot pourri, powder impregnated paper for cosmetic use; abrasives for personal use, in Class 3.
  7. United Kingdom Registration No. 1491853 for <BODY SHOP>, dated February 20, 1992, in respect of face flannels; towels; handkerchiefs; saris; napkins for removing make-up; serviettes; blankets; bed and table linen, in Class 24.
  8. United Kingdom Registration No. 1491851 for <THE BODY SHOP>, dated February 20, 1992, in respect of articles of luggage, travelling bags, shopping bags, toilet bags, tote bags, handbags, school bags, school satchels, dolly bags; holdalls; rucksacks and backpacks; wallets and purses; key cases; umbrellas and parasols, in Class 18.
  9. United Kingdom Registration No. 1425165 for <THE BODY SHOP>, dated April 17, 1990, in respect of printed publications, printed matter, stationary, writing implements; office requisites; paper tissues, in Class 16.
  10. United Kingdom Registration No. 1491847 for <THE BODY SHOP>, dated February 20, 1992, in respect of razors, razor blades, razor cases, hair curling instruments, hair clippers, cuticle clippers, tweezers, depilation appliances, manicure sets, nail clippers, scissors, cutlery, abrading instruments, nail files, emery boards, irons, pedicure sets, stropping and sharpening instruments, in Class 8.

Furthermore, the Complainant is the owner of numerous trademark registrations for <THE BODY SHOP> in block letter and logo formats in other countries throughout the world, including the following representative registrations:

  1. Australia Registration Nos. A453775, A583656, A583657, A583658;
  2. Benelux Registration Nos. 515990, 423958, 429258;
  3. Brunei Registration Nos. 15979, 18469, 17561;
  4. Canada Registration Nos. TMA466022, TMA288081, TMA449502, TMA452049, TMA422827;
  5. Denmark Registration Nos. VR03.459-1993, VR00.189-1989, VR01.742-1989;
  6. France Registration Nos. 1200089, 1194017;
  7. Germany Registration No. 396 39 797;
  8. Greece Registration Nos. 114552, 85842, 85843;
  9. Indonesia Registration Nos. 320080, 319167;
  10. Ireland Registration Nos. 147690, 147689, 120783;
  11. Japan Registration Nos. 3160683, 2612927, 2015612, 2427664;
  12. Korea Registration Nos. 362750, 383228, 360832, 369774, 371692;
  13. Mexico Registration Nos. 422154, 467027;
  14. New Zealand Registration Nos. 220346, 220347, 220348;
  15. Saudi Arabia Registration Nos. 295/10, 285/9, 224/31, 224/32;
  16. Singapore Registration No. 5829/92;
  17. Spain Registration Nos. 1755986, 1755952, 1719138, 1719139, 1165577;
  18. Sweden Registration No. 257694;
  19. Switzerland Registration Nos. 399656, 398268, 350501, 353592.

In addition to these registrations, the Complainant has filed two U.S. Service Mark applications on July 5, 2000 for registration in International Class 42, of the service marks <THE BODY SHOP DIGITAL> U.S. Application No. 76/082,891 and <THEBODYSHOPDIGITAL.COM> U.S. Application No. 76/082,892, each in respect of services being Internet portal and on-line e-commerce services.

The Complainant has also registered the domain name <thebodyshopdigital.com> on April 26, 2000, and is currently developing a www site to be accessible at that address.

 

5. Partiesí Contentions

A. Complainant

The Complainant has requested this Administrative Panel to direct that the said domain name be transferred to the Complainant.

In support of this request, the Complainant submits that, beginning with a single store in England, the Complainant has evolved into an international company with worldwide retail presence and a strong, recognized brand. The Complainantís operations currently consist of more than 1,700 retail stores trading as <THE BODY SHOP>, located in 49 countries spanning 12 time zones and 24 languages. In the United States alone, there are over 280 such stores.

The Complainant submits that it has stores located in almost every major shopping mall in the United States and in many major airports and that three of the Complainantís retail stores are located within less than 12 miles of Respondentsís address.

Having been used by Complainant in connection with its Internet-based business, and having been widely promoted and advertised among members of the general consuming public, the Complainant's said <THE BODY SHOP> and <THE BODY SHOP DIGITAL> marks symbolize tremendous goodwill and are property rights of incalculable value to the Complainant.

Furthermore, the Complainantís said <THE BODY SHOP> trademark enjoys unquestionable fame, as a result of having exclusively identified the Complainant and its goods and services and having received favorable public acceptance and recognition worldwide

The Complainant submits that its sales of branded products bearing said <THE BODY SHOP> trademark, total hundreds of millions of dollars annually. In 1999, total worldwide retail sales of products sold under said <THE BODY SHOP> trademark reached almost one billion dollars.

The Complainant submits that the Complainant has extensively marketed and promoted said <THE BODY SHOP> trademark worldwide and further submits that the Complainantís said <THE BODY SHOP> trademark has been marketed and promoted in a variety of ways, including through promotional literature, direct mail catalogs, press releases, media interviews, rallies, and, since 1995, on the Complainantís main www site located at www.the-body-shop.com and also on its U.S. subsidiaryís www site located at www.bodyshop.com. In support of these assertions, the Complainant has submitted a printout of the homepage of the said www.the-body-shop.com www site together with a print-out of the NSI WHOIS record for said <the-body-shop.com> domain name. The Complainant submits that all of these marketing and promotional activities of the Complainant prominently display said <THE BODY SHOP> trademark and/or logo.

The Complainant further submits that said <THE BODY SHOP> trademark is also prominently featured and internationally recognized through the Complainantís 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 50th 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 the year 2000, the Complainant intends to bestow the first THE BODY SHOP HUMAN RIGHTS AWARD.

The Complainant submits that having been widely promoted among members of the general consuming public, and having exclusively identified the Complainant, the Complainantís said <THE BODY SHOP> trademark symbolizes the tremendous goodwill associated with the Complainant and the registrations are property rights of incalculable value. Furthermore, the Complainant submits that due to widespread and substantial international use, the Complainantís said <THE BODY SHOP> trademark has become famous.

The Complainant states that to further develop its e-commerce activities and global Internet presence, the Complainant has created a new company named THE BODY SHOP DIGITAL. The Complainant further states that said new company is a joint venture with SOFTBANK Venture Capital and that it holds the exclusive rights to develop worldwide <THE BODY SHOP> brand online. The Complainant states that www site of the joint venture is currently under development and is scheduled to be launched later in the year 2000, first targeting markets in the United States and the United Kingdom, and subsequently other the markets in other countries.

The Complainant states that it announced the creation of the e-commerce venture in a press release issued on April 26, 2000. The joint venture was to be known as < THE BODY SHOP DIGITAL>. In support of its submissions the Complainant has furnished this Administrative Panel with a copy of said press release.

The Complainant states said press release was issued to numerous media organizations worldwide and is estimated to have reached millions of people throughout the world. The announcement of the said joint venture received vast media attention. Since the said press release was issued on April 26, 2000, the creation of said joint venture has been the subject of extensive international and local media coverage by international newswires, including numerous articles appearing in widely circulated publications in the United States and internationally, and by broadcast networks, such as CNNFN and the BBC, as well as financial and investment www sites.

Within 24-hours of the announcement of the said joint venture, the Respondents registered the said domain name <bodyshopdigital.com>, seeking to capitalize on the popularity and goodwill of the said <THE BODY SHOP> and said <THE BODY SHOP DIGITAL> marks. The Complainant submits that the said domain name significantly incorporates and is confusingly similar to Complainant's said <THE BODY SHOP> trademark and the Complainantís <THE BODY SHOP DIGITAL> trademark.

The Complainant states that the Respondents are not and never have been licensees of the Complainant and the Respondents are not and never have been otherwise authorized by the Complainant to use any of the Complainantís said <THE BODY SHOP> or <THE BODY SHOP DIGITAL> trademarks.

The Complainant submits that its registered trademark rights in <THE BODY SHOP> trademark, and common law rights acquired through the use and promotion of <THE BODY SHOP DIGITAL> mark, predate the April 26, 2000 date of registration of the said <bodyshopdigital.com> domain name by the Respondents.

The Complainant submits that the Respondents have no rights or legitimate interest in the said domain name. Pursuant to Section 4(c) of the Policy: (i) the Respondents are not using and have not used, or are not demonstrating and have not demonstrated, an intent to use the said domain name in connection with a bona fide offering of goods or services; (ii) the Respondents are not and have not been commonly known by the said domain name; and (iii) the Respondents are not making legitimate noncommercial or fair use of the said domain name, without intending to mislead and divert consumers or to tarnish Complainantís <THE BODY SHOP> trademark and <THE BODY SHOP DIGITAL> trademarks for commercial gain.

No justification, excuse, or plausible explanation exists for the Respondentsí unauthorized registration of the said domain name because (1) the said domain name has no value apart from Complainantís <THE BODY SHOP> and <THE BODY SHOP DIGITAL> marks, (2) the Complainantís <THE BODY SHOP> trademark is famous, (3) the timing of the Respondentsí registration of the said domain name was within 24 hours of the Complainantís announcement, and (4) the Respondentsí admission in other administrative proceeding that company announcements inspire his registration of domain names.

In this regard the Complainant refers to the decisions of the administrative panels in Time Warner Inc. and EMI Group plc v. CPIC Net, WIPO Case No. D2000-0433 in which the Complainant submits there was a finding that the complainants established common law rights in various combinations of their famous marks when the complainants issued a press release on their proposed merger; Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 where the Complainant submits the administrative panel held that registration of a coined, well-known mark could not have been for any plausible reason other than to trade on the goodwill of trademark owner); in Fire-Trol Holdings, L.L.C. v. Fire Foam Products Development (NAF File No. FA0002000093709) and in America Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd. (NAF File No. FA0002000093679) in which the Complainant submits the administrative panels found that the respondent had constructive knowledge of complainantís famous marks; in Europay International S.A. v. Domaines Ltd and Cecilia Ng (WIPO Case No. D2000-0513) in which the Complainant submits the administrative panel held that the respondents must have known they were infringing upon complainantís exceptionally well known mark by registering it as a domain name.

In the present Administrative Proceeding, the Complainant submits that the Respondents registered and are using the said domain name <bodyshopdigital.com> in bad faith. The Respondents registered said domain name on April 26, 2000, within 24 hours of the Complainantís said press release announcing the said joint venture.

The Complainant submits that due to the fame and registration of the Complainant's <THE BODY SHOP> trademark, the Respondents had actual and constructive knowledge of the Complainant's said <THE BODY SHOP> and said <THE BODY SHOP DIGITAL> trademarks when it selected and registered the said domain name.

In support of this assertion, the Complainant submits that given the widespread availability of the April 26, 2000 of the said press release announcing the creation of the said joint venture, the media attention garnered by the said press release, and the fact that the Respondents are located in Closter, New Jersey, within 12 miles distance of three of the Complainant's U.S. stores trading as <THE BODY SHOP>, it is inconceivable that the Respondents registered the said domain name by happenstance within hours of the public announcement concerning the said <THE BODY SHOP DIGITAL> joint venture.

By registering the said domain name when it had both actual and constructive knowledge of Complainant's <THE BODY SHOP> and <THE BODY SHOP DIGITAL> trademarks, the Respondents acted in bad faith by breaching the terms of the registration contract with the Registrar because the Respondents falsely represented that the registration of the said domain name did not infringe the rights of any third party.

On May 16, 2000 the Complainant wrote to the Respondents and claimed that the use and registration of the said domain name violated the Complainantís trademark rights, and requested that the Respondents discontinue any and all use of the said domain name and the said <THE BODY SHOP> trademark and demanded that the Respondents transfer the said domain name to the Complainant.

The Complainant states that on May 19, 2000, the Second Named Respondent telephoned the Complainantís counsel in response to the Complainantís said letter of May 16, 2000. In the course of the said telephone conversation, the Respondents refused to explain why the Respondents registered the said domain name, acknowledged that the Respondents had no business called "Body Shop Digital," refused to transfer the said domain name to the Complainant, and told the Complainantís counsel that the Complainantís counsel would be contacted by the Respondents' attorney. In the event, the Complainantís counsel never received a call from Respondents' attorney.

The Complainant states that the Respondents have been found, in at least three other cases decided under the Policy, to be engaged in a systematic pattern of registering domain names in bad faith.

In Time Warner Inc. and EMI Group plc v. CPIC Net, WIPO Case No. D2000-0433, a case which the Complainant states is the most factually similar to the present Administrative Proceeding, the First Named Respondent registered the domain names <emiwarnermusic.com>, <emiwarner.org>, <emiwarner.net>, <warneremi.net>, and <warneremi.org> immediately after the merger between Time Warner and EMI was reported in the United States on January 22, 2000, which was two days before it was announced by the companies. The administrative panel in that case found that said domain names had been registered and were being used in bad faith. In this administrative proceeding the administrative panel found that the domain names in issue in this administrative proceeding had been registered with knowledge of Time Warner and EMIís rights in its individual marks and new joint marks, and with the specific intent to trade off those rights. The merger between Time Warner and EMI had been reported in the United States on January 22, 2000, two days before it was formally announced by the companies concerned and it was during that interval that the respondent registered different combinations of the two companies marks in an attempt to exploit the expected use of these famous marks in a combined form. In addition, the administrative panel found that the respondent had engaged in a pattern of registering trademark-related domain names in bad faith.

In Morgan Stanley Dean Witter & Co. v. Syed Hussain and CPIC Net, NAF Case No. FA0004000094449, the administrative panel found that the respondents knew or should have known that MORGAN STANLEY DEAN WITTER & Co., a world renowned entity, owned the rights to its business name and marks derived from the initials of its business name; that the Respondents without legitimate interest of right to do so registered the domain names <msdwprivateequity.com> and <msdwpe.com> of another to prevent that entity from using those domain names and in order to resell those domain names to that entity or a competitor at a valuable consideration in excess of any out-of pocket expenses related to the domain name; and, that the Respondents engaged in a pattern of making such registrations.

In United States Olympic Committee v. MIC, WIPO Case No. D2000-0189, Syed Hussain, the Administrative Contact for the disputed domain name <usolympicstore.com>, wrote in an email to WIPO that "[f]acts remain same as described in complaint." In its complaint, the United States Olympic Committee stated that Mr. Hussain informed them that he "subscribes to a variety of new services and obtains press releases and then searches the Internet to see whether there are domain names available that he believes would be useful to the companies issuing the press releases." Mr. Hussainís offer to sell the domain name to United States Olympic Committee was found to be in bad faith.

The Complainant states that the Respondents in the present Administrative Proceeding, are the same as the respondents in United States Olympic Committee v. MIC, WIPO Case No. D2000-0189. The Complainant has furnished a print-out of a WHOIS database search for the domain name <thomsonprimark.com>, which the Complainant states proves that the address for said MIC, (being the respondent in the said WIPO Case No. D 2000-0189) is identical to the address of the Respondents in the present Administrative Proceeding, and that the said Mr.Syed Hussain involved in the <usolympicstore.com> dispute is the same person as Second Named Respondent in the present Administrative Proceeding.

The Complainant further submits that the Respondents have also registered numerous domain names comprised of famous and/or well-known marks owned by third parties, such as: VERIZON, WALMART, SAATCHI, E*TRADE, and DEUTSCHE TELECOM. In support of this allegation, the Complainant has furnished a print-out of a WHOIS printout from NSIís records listing the first 50 domain names registered to the First Named Respondent. The Complainant states that on information and belief, the Respondentsí registration and use of these marks is unauthorized, because no affiliation between Respondents and these third parties appears to exist.

The Complainant submits that the Respondents have misappropriated the goodwill in the Complainant's <THE BODY SHOP> and <THE BODY SHOP DIGITAL> trademarks and that the Respondents are using the said domain name <bodyshopdigital.com> in bad faith. Attempts by the Complainant to reach the www site located at the said domain name result in receipt of a response from the Registrar that the said domain name has been reserved by one of its customers. The Complainant has submitted a printout of one such response.

The Complainant submits that the Respondentsí registration and use of the said domain name is likely to cause confusion, mistake, or deception as to: (1) the affiliation, connection, or association of the Respondents and Complainant; and (2) the origin, sponsorship, or approval of the Complainant, its services, and commercial activities. Further, the Complainant submits that the Respondentsí registration and use of the said domain name interferes with the Complainantís intention or ability to have a business presence on the Internet under the names that the public will reasonably expect to find the Complainantís www site.

Furthermore, it is submitted by the Complainant that the Respondentsí misappropriation of the said domain name will continue to irreparably injure the reputation and hard-earned goodwill of the Complainant and its <THE BODY SHOP> and <THE BODY SHOP DIGITAL> trademarks.

The Complainant submits that if the Respondents are allowed to retain ownership of the said domain name, the Complainant will be unable to fully use, in an unhindered manner, its famous <THE BODY SHOP> trademark or its widely publicized <THE BODY SHOP DIGITAL> trademark and trade name to designate and identify a www site by one of the names likely to be used by persons looking for the www site for the Complainant, its services on the Internet, and/or the e-commerce site for the <THE BODY SHOP DIGITAL> joint venture. Further, if the Respondents are allowed to retain ownership of the said domain name, the Complainant will be unable to control unlimited material and information the Respondents can post on a www site associated with said domain name, which consumers will confuse and associate with the Complainant and/or its <THE BODY SHOP> and <THE BODY SHOP DIGITAL> trade names.

The Complainant submits that since the Respondents have been shown to have engaged in a pattern of bad faith in at least three prior decisions under the Policy, the Respondentsí registration and use of the said domain name meet the bad faith criteria outlined in paragraph 4(b)(ii) of the Policy. Specifically, it is alleged that the Respondents have a clear pattern of registering trademark-related domain names in order to prevent the trademark owner from reflecting its mark in a domain name.

Furthermore the Complainant submits that the Respondentsí registration and use of the said domain name meets the bad faith criteria set forth in paragraph 4(b)(iv) of the Policy. As previously noted, within hours of the Complainantís announcement of its e-commerce venture under the mark and name <THE BODY SHOP DIGITAL>, the Respondents registered <bodyshopdigital.com> as a domain name. The Complainant submits that in prior administrative proceedings under the Policy, the Second Named Respondent explained that he monitored press releases and registered domain names related to the companies mentioned in those press releases. The Complainant submits that the said domain name <bodyshopdigital.com> is comprised of Complainantís <THE BODY SHOP> and <THE BODY SHOP DIGITAL> marks and names. As a result, consumers undoubtedly will think that the said domain name and corresponding www site belongs to, originates with, is affiliated with, or is sponsored by Complainantís new <THE BODY SHOP DIGITAL> joint venture.

The Complainant submits that the Respondentsí activities meet the bad faith element set forth in paragraph 4(b)(iii) of the Policy because the Respondentsí registration and use of the said domain name interferes with and disrupts the Complainant's business and the Complainant's intention and ability to fully exploit the e-commerce business presence on the Internet under its <THE BODY SHOP> and <THE BODY SHOP DIGITAL> marks. Specifically, by using the said domain name for an inactive www site, the Respondents are interfering with the Complainantís ability to (1) effectively and fully promote its <THE BODY SHOP> and <THE BODY SHOP DIGITAL> trademarks and sell <THE BODY SHOP> products on the Internet, and (2) control the images and information associated with its trademarks and logos. The Complainantís efforts to sell its products over the Internet will be hindered if the Respondents are permitted to freely use the Complainantís valuable marks, especially incorporated in a domain name significantly comprised of the Complainantís famous <THE BODY SHOP> trademark.

It is further alleged by the Complainant that the Respondents breached the registration contracts with the Registrar by knowingly misrepresenting in the registration agreement for the said domain name that the registration of the said domain name did not infringe the rights of any third party. Such breach has been held to constitute bad faith under the Policy. In Slep-Tone Entertainment Corporation v. Sound Choice Disc Jockeys, Inc. (NAF File No. FA2002000093636) and in Noodle Time, Inc. v. Max Marketing (eResolution Case No. AF-0100) there was a finding that the domain name had been registered and was being used in bad faith because the Respondents did not make its warranty of no infringement in the registration agreement in good faith.

B. Respondents

There was no Response filed by the Respondents.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy places on the Complainant the onus of proving that:

(i) the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondents have no rights or legitimate interests in respect of the said domain name; and

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

Firstly there is the question as to whether this proceeding is properly brought against both Respondents. The First Named Respondent is the registrant of the said domain name. The Second Named Respondent is the Administrative Contact and the Billing Contact for the registration. It would appear from the information furnished by the Complainant that the First Named Respondent is either an alias for the Second Named Respondent or an entity over which the Second Named Respondent has control. This Administrative Panel is therefore satisfied that this Administrative Proceeding is properly brought against the First and Second Named Respondents.

As to whether the said domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, it is clear that the Complainant is the owner of the <THE BODY SHOP> trademark and service mark. Furthermore it is clear that said trademark and service mark has been registered and has become well known through the business activities of the Complainant in the sale of goods and provision of services, to the extent that there is a significant goodwill established in the said trademark and service mark. The Complainant therefore has rights in the said trademark and service mark both through registration and at common law.

There appears however to be somewhat of a contradiction in the Complainantís case regarding the ownership of and the existence of common law rights in <THE BODY SHOP DIGITAL> trademark.

On the one hand the Complainant submits that it is the owner of the said <THE BODY SHOP DIGITAL> trademark and that it has applied for registration of the said trademark. On the other hand the Complainant states that a new company,The Body Shop Digital, which is a joint venture with a third party, SOFTBANK Venture Capital, holds the exclusive rights to develop worldwide <THE BODY SHOP> brand online.

It would seem from the documentation filed in the Complaint, that the Complainant is a majority shareholder in this new company. Furthermore, although the Complainant has submitted extensive details about the registrations of the said <THE BODY SHOP> trademark and service mark, no supporting documentation relating to the said applications for registration in the USA of said <THE BODY SHOP DIGITAL> and <THEBBODYSHOPDIGITAL.COM> service marks have been furnished to this Administrative Panel.

It is also significant that the applications for registration in the USA of said <THE BODY SHOP DIGITAL> and <THEBBODYSHOPDIGITAL.COM> were not filed until after the date on which the said domain name was registered by the Respondents and since it is the Complainantís case that the Respondents registered the said domain name within 24 hours of the first publication of reports of the planned joint-venture, it is not clear as to whether the said <THE BODY SHOP DIGITAL> had been used in trade at all or to sufficient extent as to become in fact a common law trademark at the time the Respondents registered said domain name. All that seems to have happened was the release of a statement to the press announcing the forthcoming business activity. The Complainant has not submitted any evidence or any legal argument as to how common law trademark rights could be established by merely issuing a press release.

<THE BODY SHOP DIGITAL> certainly had the potential to become a common law trademark, but there is no evidence submitted that the Complainant or indeed the joint venture company, if it had been formed at that time, had used said <THE BODY SHOP DIGITAL> as a trademark in any way at the time that the Respondents registered the said domain name.

Nonetheless, this Administrative Panel is satisfied that the said domain name <bodyshopdigital.com> is confusingly similar to the Complainantís said <THE BODY SHOP> trademark and service mark, and as it is clear from the documentation filed that the Complainant is the owner of the said <THE BODY SHOP> trademark and service mark, this Administrative Panel concludes that the Complainant has satisfied the first part of the test.

As to whether the Respondents have any rights or legitimate interest in the said domain name, it is clear that the Complainant and a third party, intended to launch a joint venture and to establish said <THE BODY SHOP DIGITAL> as the principal trademark and service mark for said joint-venture. According to the Complainantís submissions, the applications for registration of <THE BODY SHOP DIGITAL> are owned by the Complainant itself while the Complainant intended that the rights in the said <THE BODY SHOP DIGITAL> trademark would be exploited by the new joint venture company referred to by the Complainant.

In any event, there is no question of the Respondents having any rights in either the <THE BODY SHOP> or <THE BODY SHOP DIGITAL> trademarks or service marks. From the information submitted by the Complainant, it seems that on the balance of probabilities, the Respondents have no rights in the said domain name and that said domain name was registered as an opportunistic venture when the Respondents first became aware that the Complainant intended to launch the joint venture, building on the goodwill of the Complainant's established <THE BODY SHOP> trademark and service mark.

This Administrative Panel accepts that on the evidence provided by the Complainant and in the absence of any submissions from the Respondents, that the Complainant has established that (i) the Respondents are not using and have not used, or are not demonstrating and have not demonstrated, an intent to use the said domain name in connection with a bona fide offering of goods or services; (ii) the Respondents are not and have not been commonly known by the said domain name; and (iii) the Respondents are not making legitimate noncommercial or fair use of the said domain name, without intending to mislead and divert consumers or to tarnish Complainantís <THE BODY SHOP> trademark and service mark and, insofar as they exist, the Complainantís rights in <THE BODY SHOP DIGITAL> trademark and service mark for commercial gain. It follows that the Respondents have no rights or legitimate interest in the said domain name.

Furthermore, this Administrative Panel is satisfied that the Respondents registered and are using said domain name in bad faith. In this regard, this Administrative Panel is not bound by the findings of fact in earlier administrative proceedings to which reference has been made by the Complainant.

The Complainant has satisfied this Administrative Panel that the Respondents have registered the said domain name in order to prevent the Complainant, being the owner of said <THE BODY SHOP> trademark and service mark, from reflecting the new mark <THE BODY SHOP DIGITAL> in a corresponding domain name. Furthermore, it would appear that the Respondents have engaged in a pattern of such conduct. Although such activity is not precisely that described in paragraph 4(b)(ii) of the Policy, since there is no evidence that <THE BODY SHOP DIGITAL> was a common law trademark at the time that the said domain name was registered, this Administrative Panel notes that the examples of bad faith registration set out in paragraph 4(b) of the Policy, are illustrative and are not exhaustive. This Administrative Panel also notes that the essential element of the said <THE BODY SHOP DIGITAL> trademark is the Complainant's well-established <THE BODY SHOP> trademark and service mark and it would appear to this Administrative Panel that the two trademarks are so closely related that any unauthorized use of the former would probably result in infringement of the latter.

Furthermore, since the Respondents have no rights or legitimate interest in the said domain name, this Administrative Panel is satisfied that the Respondents registered said domain name as an opportunistic attempt to gain from the goodwill of the Complainant in the said <THE BODY SHOP> trademark and service mark, immediately following the first media reports of the Complainantís planned joint venture. This Administrative Panel accepts that the said registration was not a result of mere happenstance and that the Respondents were aware of the Complainantís reputation and goodwill in said <THE BODY SHOP> trademark and service mark.

These circumstances together with the fact that the Respondents have not established a www site linked to the said domain name, and the fact that the Respondents have made no effort to refute the allegations made by the Complainant, lead this Administrative Panel to infer that the circumstances outlined by the Complainant, indicate that the Respondents registered said domain name primarily for the purpose of selling, renting, or otherwise transferring the said domain name registration to the Complainant or to the joint venture company established by the Complainant, for valuable consideration in excess of the Respondentsí out-of-pocket costs directly related to the said domain name.

In the circumstances this Administrative Panel concludes that the Complainant has established that the Respondents have registered and are using said domain name in bad faith.

 

7. Decision

With specific reference to paragraph 4(i) of the Policy and paragraph 15 of the Rules this Administrative Panel decides that the domain name <bodyshopdigital.com> registered by Respondents is confusingly similar to the Complainant's trademark and

service mark, that the Respondents have no rights or legitimate interest in respect of that domain name and that the Respondents have registered and are using that domain name in bad faith. Accordingly, this Administrative Panel decides that said domain name <bodyshopdigital.com>should be transferred to the Complainant.

 

 


 

 

James Bridgeman
Sole Panelist

Dated: November 26, 2000