WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Body Shop International plc v. A-Team/ Lasse Nygaard
Case No. DAS2003-0001
1. The Parties
The Complainant is The Body Shop International plc, of West Sussex, England, United Kingdom of Great Britain and Northern Ireland, represented by Sandel, Løje & Wallberg of Denmark.
The Respondent is A-Team/ Lasse Nygaard, of Oslo, Norway.
2. The Domain Name and Registrar
The disputed domain name <bodyshop.as> is registered with Active ISP ASA.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 11, 2003. On April 11, 2003, the Center transmitted by email to Active ISP ASA a request for registrar verification in connection with the domain name at issue. On April 14, 2003, Active ISP ASA 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 April 17, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was May 7, 2003. The Respondent did not submit any response before the due date. Accordingly, the Center notified the Respondents default on May 9, 2003.
The Center appointed Madeleine De Cock Buning as the sole panelist in this matter on May 22, 2003. 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.
On May 22, 2003, (thirteen days after the Centers notification of default to Respondent) the Center received an e-mail message from the Respondent in which the Respondent stated that he could not understand the English documents that were sent to him and that he had not received the documents in Norwegian.
On May 23, 2003, the Center sent the Respondent an e-mail message offering language assistance and confirming that the language of the administrative proceeding is the language of the Registration Agreement (Section 11 (a) of the Rules). Since the Registration Agreement of the domain name <bodyshop.as> is both in Norwegian and in English, the Center notified the complaint in English. This message was sent to the Respondent with a translation in Norwegian. The Respondent has not submitted any response to this communication.
After this and in accordance with paragraph. 10(c) of the Rules, the date by which the Administrative Panel is required to forward its decision to the Center was extended to June 16, 2003.
4. Factual Background
The following information is derived from the Complaint and supporting evidence submitted by the Complainant.
The Body Shop trades through stores around the world and has over 5,000 employees world wide. The Complainant has been established in the home country of the Respondent Norway since 1985.
The Complainant is the holder of registrations of the trademark THE BODY SHOP in multiple countries. The trademark has been registered in Norway since 1984.
The disputed domain name <bodyshop.as> was registered on November 12, 2001.
On the web site connected to the disputed domain name <bodyshop.as> a hyperlink is placed that connects to the web site "www.mamut.com/homepages/Norway/3/7/a team shop". On this web site, the Respondent offers for sale products such as skin activators, extracts of Aloe Vera, and vitamins and minerals.
The Respondent has not filed any response to the Complaint or answered the Complainant's factual assertions or evidence.
5. Parties Contentions
The Complainant contends that:
(i) Complainant is the owner of several registrations of the trademark THE BODY SHOP in Norway. The domain name <bodyshop.as> is confusingly similar to the Complainants trademark;
(ii) To the best of the Complainants knowledge the Respondent has no rights or legitimate interests in respect of the domain name that is the subject of the Complaint;
(iii) The domain name was registered and is being used in bad faith, since:
a. Respondent must have been aware of the existence of the Complainant and their rights to the well-known trademark THE BODY SHOP; and
b. when approached by the Complainant, the Respondent offered to sell the domain name for NOK 50.000, which equals 6.750.
The Respondent did not reply to the Complainants contentions.
6. Discussion and Findings
The Respondent was given notice of this proceeding in accordance with the Rules.
In accordance with the Rules, Section 11 (a) "the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding." The Registrar has confirmed that the Registration Agreement is in Norwegian and English. Therefore, the Center has notified the complaint in English.
By reacting to the Respondent's late response and offering language assistance, on which no response followed, the Center amply discharged its responsibility under the Rules paragraph 2(a) to employ reasonably available means calculated to achieve actual notice to the Respondent of the Complaint.
The Administrative Panel has sole discretion to choose the language of the Decision itself.
The Respondents default does not automatically result in a decision in favor of the Complainant. The Complainant must still prove the elements required by Policy paragraph 4(a). In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the Domain Name, the Complainant must prove that each of the three following elements are satisfied:
1. The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
2. The Respondent has no rights or legitimate interests in respect of the Domain Name; and
3. The Domain Name has been registered and is being used in bad faith.
Pursuant to Paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with Paragraph 14(b) of the Rules, the Panel may draw such inferences as it considers appropriate from the Respondents failure to reply to the Complainants assertions and evidence or to otherwise contest the Complaint. In the circumstances, the Panels decision is based upon the Complainants assertions and evidence and inferences drawn from the Respondents failure to reply.
A. Identical or Confusingly Similar
The Complainant has provided sufficient evidence of its rights to the trademark THE BODY SHOP, that it uses worldwide and has registered in several countries, including Norway.
The disputed domain name is <bodyshop.as>.
The Policy requires that the disputed domain name be 'identical or confusingly similar' to the Complainant's THE BODY SHOP trademark. The domain name in dispute and the Complainants THE BODY SHOP trademarks are not identical, and the issue is therefore whether the domain name and the THE BODY SHOP trademarks are confusingly similar.
The contested domain name is comprised of the dominant and distinctive parts of the registered trademarks. In Norwegian AS is the acronym for Aksjeselskapp (public limited company) the ccTLD suffix .as could be construed to refer to this meaning.
In view of the above, the Panel finds that the domain name is confusingly similar to the THE BODY SHOP trademarks.
B. Rights or Legitimate Interests
Even though the Respondent has not filed any reply to the Complaint and has not contested the Complainants assertions, it is upon the Panel to consider whether the Respondents use of the disputed domain name demonstrates rights or legitimate interests in the domain name. According to Policy paragraph 4(c), the following circumstances, if proved, demonstrate a registrants rights or legitimate interests in a domain name:
(i) the registrant used or demonstrably prepared to use the domain name or a corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute;
(ii) the registrant (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or
(iii) the registrant is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainants mark.
To satisfy the requirements of Policy paragraph 4(c)(i), the Respondents use of the disputed domain name must be in connection with a "bona fide" offering of goods or services. In the circumstances of this case the Respondents use of the disputed domain name is not "bona fide" within the meaning of Policy paragraph 4(c)(i) since there is no apparent legitimate justification for the Respondents registration and use of the <bodyshop.as> domain name that is confusingly similar to the Complainants trademark. The Respondent would only have a right to register and use the disputed domain name if the Complainant had specifically granted that right. The Complainant has not licensed or otherwise permitted Respondent to use the trademark THE BODY SHOP.
In addition, the Panel draws an adverse inference from the Respondents failure to provide any explanation or rationale for its use of the disputed domain name for its web site.
Paragraph 4(c)(ii) of the Policy is not applicable. The Respondent does not contend, and there is no evidence that, the Respondent has been commonly known by the disputed domain name or that the disputed domain name is derived from one of the Respondents trademarks or trade names. The Respondent is trading under the name A-Team.
Paragraph 4(c)(iii) of the Policy is not applicable. The Respondent is using the domain name to sell products.
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that the Respondent registered and has used the disputed domain name in bad faith. Paragraph 4(a)(iii) of the Policy requires that both bad faith registration and bad faith use be proved.
Paragraph 4(b) of the Policy provides that the following circumstances are deemed to be evidence that a registrant has registered and used a domain name in bad faith:
(i) circumstances indicating that the registrant has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the complainants mark as to the source, sponsorship, affiliation or endorsement of its web site or location or of a product or service on its web site or location.
The Panel finds that the Respondent apparently knew of the Complainants THE BODY SHOP trademark and registered and is using the disputed domain name in order to confuse and divert internet traffic to the Respondents web site, based upon the following circumstances:
It is clear that the Respondent, has a business active in the same market as the Complainant - the disputed domain name is connected to a site on which the Respondent offers competing products such as skin activators, extracts of Aloe Vera - knows, or at least should have known, the both internationally and on the Norwegian market well-known trademark THE BODY SHOP when registering the disputed domain name <bodyshop.as>. The Respondent has deliberately included the well-known trademark THE BODY SHOP in the disputed domain name in order to attract business to its web site. By registering and using the disputed domain name the Respondent has created a likelihood of confusion with the THE BODY SHOP trademark as to the affiliation or endorsement of its web site.
In addition, the Panel further takes into consideration that, when approached by the Complainant, the Respondent offered to sell the domain name for NOK 50.000 ( 6.750).
In view of the above the Panel concludes that there is sufficient evidence that Respondent's registration and use of the domain name <bodyshop.as> is in bad faith.
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, <bodyshop.as> be transferred to the Complainant.
Madeleine De Cock Buning
Dated: June 12, 2003