The Complainant is The Body Shop International Plc of West Sussex, United Kingdom of Great Britain and Northern Ireland, represented by Melbourne IT Digital Brand Services AB, Sweden.
The Respondent is METALCO PRO SA of Bucuresti, Romania.
The disputed domain name <bodyshop.ro> (the “Disputed Domain Name”) is registered with RNC.ro.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 3, 2009. On September 3, 2009, the Center transmitted by email to RNC.ro a request for registrar verification in connection with the Disputed Domain Name. On September 8, 2009, RNC.ro transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 September 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 29, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 30, 2009.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on October 2, 2009. 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 global manufacturer and retailer of beauty and cosmetic products which are promoted as being natural and ethically produced. The Complainant was founded in 1976 and has over 2,400 stores across 61 countries including Romania.
The Complainant has registered the trade mark THE BODY SHOP as a mark in respect of cosmetic products in several classes in over 90 countries worldwide. Among these, the Complainant has registered:
- the device mark incorporating the words THE BODY SHOP in class 3 and 35 under Romanian trade mark registration no. 021515/1993;
- the word mark THE BODY SHOP in classes 3, 21 and 35 under international trade mark registration no. 841798/2004 (extending to Romania amongst other countries); and
- the word mark THE BODY SHOP in classes 3, 21 and 42 under Community Trade Mark no. 001980416 which has been valid in Romania since January 1, 2007.
Furthermore, the Complainant's brand THE BODY SHOP was ranked in 2009 as the 344th most famous brand in the world by “Superbrands - The Centre for Brand Analysis”.
The Complainant's primary contentions can be summarised as follows:
(a) The Disputed Domain Name is confusingly similar to the Complainant's registered trade mark THE BODY SHOP.
(b) The Disputed Domain Name does not appear to have been used at all since registration and the Complainant has not licensed or otherwise authorised the Respondent to use its mark THE BODY SHOP and the Respondent therefore has no rights or legitimate interest in the Disputed Domain Name; and
(c) In consideration of the fame and reputation of the Complainant's mark The Body Shop, as the Disputed Domain Name was registered subsequent to the registration of the Complainant's Romanian trade mark, the Disputed Domain Name must have been registered in bad faith.
The Respondent did not reply to the Complainant's contentions.
It is open for the Panel to infer from the Respondent's failure to file a Response that the Respondent does not dispute the Complainant's contentions and otherwise to make such inferences from this as the Panel may see fit.
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following 3 elements:
(a) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(c) the Disputed Domain Name has been registered and is being used by the Respondent in bad faith.
Further, paragraph 14(b) of the Rules provides that where a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules, the Panel shall draw such inferences therefrom as it considers appropriate. Accordingly, the Panel may draw inferences from the Respondents' failure to submit a Response in accordance with paragraph 5(a) of the Rules as it considers appropriate.
It is a well-established rule that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the domain extension, in this case <.ro>, should be disregarded (Rohde & Schwarz GmbH & Co. KG v. Pertshire Marketing, Ltd, WIPO Case No. D2006-0762).
It is obvious that the Disputed Domain Name which incorporates the words “body shop” is confusingly similar to the Complainant's THE BODY SHOP trade mark which has been registered in Romania and is known in many countries worldwide. The difference between the two is the mere omission of the word “the” from the Disputed Domain Name, and this does not detract from the fact that the dominant part of the Complainant's trade mark and brand has been incorporated in the Disputed Domain Name. The Panel notes also that <bodyshop.com> is registered by the Complainant.
Accordingly, the Panel finds that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights in satisfaction of paragraph 4(a)(i) of the Policy.
In consideration of the Complainant's contentions set out at paragraph (b) at 5A above, the Panel finds that the Complainant has made out a prima facie case in respect of the Respondent's lack of rights or legitimate interests in the Disputed Domain Name.
Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions states that once a complainant makes a prima facie case in respect of the lack of rights or legitimate interests of the respondent, the respondent carries the burden of demonstrating it has rights or legitimate interests in the subject domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
In the absence of any evidence submitted by the Respondent to demonstrate that the Respondent:
(a) used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services;
(b) has been commonly known by the Disputed Domain Name; or
(c) is making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant's THE BODY SHOP mark,
It is open to the Panel to infer that the Respondent does not dispute the Complainant's assertions. In view of the absence of such evidence and the Complainant's contentions as set out at paragraph (b) at section 5A above, and noting also that in such circumstances as aforesaid, where a domain name is inactive it is open to the Panel to conclude that the Respondent had no rights or legitimate interests in the domain name (Expedia, Inc. v. Miles Pennella, WIPO Case No. D2001-1416), the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy in respect of each of the Disputed Domain Name.
The Panel refers to the Complainant's contention at paragraph (c) above at 5A and notes that if such contention is made out, there will be sufficient evidence of the registration and use of the Disputed Domain Names in bad faith under paragraph 4(b)(iv) of the Policy.
In view of the fame and reputation of the Complainant's THE BODY SHOP mark globally and in Romania, it is clear that the Disputed Domain Name can only refer to the Complainant. The obvious implied reference to such a well-known brand by a party with no connection to the brand has been consistently found to be an indicator of opportunistic bad faith, even where the disputed domain name is not in use: (Parfums Christian Dior v Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
The Panel therefore finds that the Respondent has satisfied paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <bodyshop.ro> be transferred to the Complainant.
Dated: October 16, 2009