The Complainant is The Body Shop International PLC of West Sussex, United Kingdom of Great Britain and Northern Ireland represented by Baker & McKenzie, China.
The Respondent is Shi Jun Li , Yang Shi, Hainan, China. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 8, 2013. On January 8, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 9, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent was listed as the registrant and providing the contact details for the disputed domain name. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 14, 2013.
The Center verified that the Complaint together with the amendment to 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 January 15, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 4, 2013. The Respondent did not submit any formal response, and instead emailed the Center on February 3, 16, 17, 20, 21, 22 and 27, 2013, indicating it was willing to transfer the dispute domain name to the Complainant. The Complainant opted to go forward with the UDRP proceedings on February 18, 2013. Accordingly, the Center notified Parties that it would be proceeding to Panel Appointment on February 18, 2013.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on February 28, 2013. 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. 4. Factual Background
The Complainant offers beauty and cosmetic products all over the world under the trademark THE BODY SHOP, and has done so for decades. The Complainant is the registered owner of word and figurative trademarks consisting of the words “the body shop” in a number of jurisdictions, including China (Registration No. 624132 registered in 1992), and in the United Kingdom (Registration No. 1133984, registered in 1980). The Complainant also operates product sales websites linked to the domain names , , , , and .
The Respondent is based in China. The disputed domain name was registered on July 4, 2012. 5. Parties’ Contentions A. Complainant
The Complainant claims the disputed domain name is confusingly similar to the Complainant’s THE BODY SHOP trademark because the disputed domain name consists of the Complainant’s trademark in its entirety, differing only in the country code top level domain (“ccTLD”), and the exact correspondence is highly likely to cause consumer confusion.
The Complainant claims the Respondent has no rights or legitimate interests in the disputed domain name because: (1) the Complainant’s rights in THE BODY SHOP predate the registration of the disputed domain name; (2) the Complainant has not authorized the Respondent to use the THE BODY SHOP mark in any way, including for registering the disputed domain name or offering THE BODY SHOP products for sale; (3) the Respondent’s use of the disputed domain name is not a bona fide offering of goods because the Respondent is neither an authorized nor a registered reseller; (4) the Respondent’s use of the disputed domain name is not a legitimate noncommercial or fair use; and (5) the Respondent’s use of the disputed domain name (for ecommerce sales) intentionally misleads and diverts consumers away from the Complainant’s authorized sales.
The Complainant claims the Respondent has registered and is using the disputed domain name in bad faith because: (1) the Complainant’s THE BODY SHOP trademark is very well known; (2) the website linked to the disputed domain name purports to sell original THE BODY SHOP products, which indicates the Respondent knew of the Complainant and its rights and intended to sell the Complainant’s illegally imported products in China; (3) the Respondent is a repeat infringer, thus establishing a pattern of bad-faith conduct; (4) the unauthorized offering of THE BODY SHOP products coupled with the featuring of the Complainant’s marks on the website linked to the disputed domain name indicates that the Respondent has intentionally attempted to attract consumers by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the website linked to the disputed domain name; and (5) the Respondent’s registration of the disputed domain name is primarily aimed at disrupting the Complainant’s business by diverting consumers away from the Complainant’s legitimate websites. B. Respondent
The Respondent did not submit a formal response. However, in informal emails sent to the Center, the Respondent indicated it was willing to transfer the disputed domain name to the Complainant. 6. Discussion and Findings A. Identical or Confusingly Similar
The record shows the Complainant owns trademark rights in THE BODY SHOP recognized in China and elsewhere prior to the registration of the disputed domain name in 2012. The record also shows that the Respondent is attempting to use the disputed domain name in connection with the sale of goods.
The disputed domain name consists almost entirely of the Complainant’s THE BODY SHOP trademark. The disputed domain name features the Complainant’s trademark in its entirety.
“The Policy requires that the disputed domain name must be identical or confusingly similar to a mark in which the Complainant has rights. This requirement can be satisfied by proof that the Complainant is the owner or licensee of a registered mark anywhere in the world – not just in the country of Respondent’s residence.” Advanced Magazine Publishers Inc. v. Computer Dazhong,WIPO Case No. D2003-0668. The Panel finds that the Complainant has established its rights in the THE BODY SHOP trademark.
“In most cases where a domain name incorporates the entirety of a trademark, then the domain name will for the purposes of the Policy be confusingly similar to the mark.” Research in Motion Limited v. One Star Global LLC,WIPO Case No. D2009-0227. “The issue is not whether confusion is likely in the trademark sense (that is, confusion as to source based on the domain name and its use in connection with a website), but rather, whether the domain name, standing alone, is sufficiently similar to the trademark to justify moving on to other elements of a claim for cybersquatting.” F. Hoffmann-La Roche AG v. P Martin,WIPO Case No. D2009-0323. “Each case must be judged on its own facts, and the assessment will always depend on the specific mark and the specific domain name.” Research in Motion Limited v. One Star Global LLC,supra.
Here, the disputed domain name is identical to the Complainant’s trademark but for the ccTLD, and the ccTLD does not reduce the prominence of the Complainant’s trademark therein. The Panel finds that it is also likely that consumers would be confused by the use of the trademark in the disputed domain name.
The Panel concludes that the disputed domain name is confusingly similar to the Complainant’s THE BODY SHOP trademark and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. B. Rights or Legitimate Interests
The Panel finds there is no evidence in the record to indicate that the Respondent is associated or affiliated with the Complainant or that the Respondent has any other rights or legitimate interests in the phrase “thebodyshop”. As such, the Complainant has successfully presented a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent has not rebutted. Discussed more fully below, the Panel also finds the Respondent is not engaged in a bona fide offering of goods and services. Finally, there is no evidence in the record to indicate that the Respondent’s use of the disputed domain name is a legitimate noncommercial or fair use, or that the Respondent is commonly known by the disputed domain name.
Accordingly, the Panel finds that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied. C. Registered and Used in Bad Faith
The record shows the Complainant owns trademark rights in THE BODY SHOP that precede the creation of the disputed domain name. The disputed domain name is essentially identical to the trademark and incorporates the trademark in its entirety. A simple Internet search for “the body shop” results in links predominantly related to the Complainant and its websites, and it is likely, given the notoriety of the Complainant’s business, that this was true at the time the disputed domain name was registered. The Panel finds that the Respondent was likely aware, or should have known, of the Complainant rights when registering the disputed domain name. This is particularly true in light of the fact that the Complainant is actively operating sales websites linked to , , , , and .
The record also indicates that the website linked to the disputed domain name features the THE BODY SHOP trademark and advertises goods similar to those offered by the Complainant under the THE BODY SHOP mark. The Panel finds that the Respondent’s advertisement of goods constitutes commercial competition with the Complainant and the Complainant’s products that trades on the goodwill invested by the Complainant in the THE BODY SHOP trademark.
The use of a domain name featuring a trademark to advertise goods or services, which compete with those provided under that trademark supports a finding that the domain name registrant was aware of the other party’s mark at the time the domain name was registered. Lancôme Parfums et Beaute & Compagnie v. D Nigam, Privacy Protection Services / Pluto Domains Services Private Limited,WIPO Case No. D2009-0728. Moreover, by registering a domain name using the Complainant’s THE BODY SHOP trademark and advertising goods in competition with the Complainant using the Complainant’s well-known marks, the Respondent is intentionally diverting traffic from the Complainant’s business and websites.
Paragraph 4(b)(iv) of the Policy states that where a registrant, by using a domain name, intentionally attempts to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website, such use constitutes evidence of bad faith registration and use.
The record shows that the Respondent has used the disputed domain name to advertise goods in direct commercial competition with the Complainant and the Complainant’s products. Moreover, the incorporation of the Complainant’s trademark into the disputed domain name combined with the content featured on the linked website, all used without publishing an accurate disclosure of the Respondent’s relationship with the Complainant, illustrates an intent on the part of the Respondent to deceive consumers into believing that the disputed domain name and the goods offered for sale by the linked website are associated with, affiliated with, and/or endorsed by the Complainant. The record offers no evidence leading to a different explanation, and instead indicates that even the products sold by the linked website are either illegally imported and/or sold, and/or counterfeit. The Panel finds that these actions cannot constitute a bona fide or good faith use.
The Panel concludes that the Respondent’s conduct falls within the scope of paragraph 4(b)(iv) of the Policy. 7. Decision
For 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, be transferred to the Complainant.
Kimberley Chen Nobles
Sole Panelist
Date: March 7, 2013
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